Court of Justice of the European Communities (including Court of First Instance Decisions)

(Community trade mark Opposition proceedings Application for Community figurative mark affilene Earlier Community word mark AFFILIN Relative ground for refusal Likelihood of confusion Similarity between products Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T-87/07,

Scil proteins GmbH, established in Halle (Germany), represented by V. Dalichau and I.-M. Helbig, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Indena SpA, established in Milan (Italy),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 January 2007 (Case R 10/2006-2) relating to opposition proceedings between Scil proteins GmbH and Indena SpA,

composed of V. Tiili, President, F. Dehousse and I. Wiszniewska-Białecka (Rapporteur), Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 22 March 2007,

having regard to the response lodged at the Court Registry on 12 July 2007,

further to the hearing on 4 July 2008,

gives the following

Background to the dispute

1. On 27 June 2002, Indena SpA ('Indena') filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2. The mark for which registration was sought is the figurative sign reproduced below:



3. The goods in respect of which registration of the mark was sought fall within class 1 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: 'extracts of medicinal plants for use in the pharmaceutical, cosmetic and food industries'.
4. The trade mark application was published in Community Trade Marks Bulletin No 14/03 on 10 February 2003.
5. On 8 April 2003, the applicant, Scil proteins GmbH filed a notice of opposition against registration of the mark affilene with respect to all the goods covered by the application for registration, relying on a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
6. The opposition was based on Community registration No 2 583 391 of the word mark AFFILIN, applied for on 19 February 2002 and granted on 2 December 2003 with respect to the goods set out below:

class 1: 'Chemicals used in industry, science as well as in agriculture, horticulture and forestry; analysis and diagnostic preparations; biological preparations for laboratory analysis and diagnostics; all the aforesaid goods in particular containing antibodies or antibody-type proteins or parts thereof, including for purifying and stripping substances from mixtures; except brightening agents for the preparation of synthetic and natural fibres';

class 5: 'Pharmaceutical and veterinary preparations, except anti-epileptics; diagnostic and analysis preparations for medical and veterinary purposes; re-agents for medical and veterinary purposes; all the aforesaid goods, in particular containing antibodies or antibody-type proteins or parts thereof, including for purifying and stripping substances from mixtures'.

7. On 3 September 2004, following the notice of opposition, Indena limited the list of goods for which registration was sought to those corresponding to the following description: 'extracts of medicinal plants for use in the pharmaceutical, cosmetic and food industries, not for diagnostic purposes'.
8. By decision of 14 November 2005, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94.
9. On 19 December 2005, Indena filed an appeal with OHIM against the Opposition Division's decision.
10. By decision of 23 January 2007 ('the contested decision') the Second Board of Appeal of OHIM upheld the appeal in part.
11. As regards the comparison of the signs, the Board of Appeal held that there was a high degree of similarity between the marks at issue.
12. The Board of Appeal noted that the goods for which registration was sought were intermediate goods sold to qualified professionals working in the pharmaceutical, cosmetic and food industries, who are particularly attentive.
13. As regards a comparison of the goods, the Board of Appeal held, first of all, that 'extracts of medicinal plants for use in the pharmaceutical industry, not for diagnostic purposes' referred to in the application for registration could be included in 'pharmaceutical and veterinary preparations' designated by the earlier mark in class 5 and that, therefore, the goods were similar. Since a pharmaceutical preparation may mention the trade mark of the medicinal plant extracts that it contains the Board of Appeal found that there was a likelihood of confusion.
14. The Board of Appeal held, second, that there was no similarity between 'extracts of medicinal plants for use in the cosmetic and food industries, not for diagnostic purposes' mentioned in the applicant for registration ('the plant extracts concerned') and the goods designated by the earlier mark. In that connection, it held that the plant extracts concerned had no connection to either 'pharmaceutical and veterinary preparations' designated by the earlier mark in class 5, or to 'chemicals used in industry, science as well as in agriculture, horticulture and forestry' designated by the earlier mark in class 1. It held that there was an obvious similarity between plant extracts and biological preparations. However, it held that the similarity between the plant extracts concerned and 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark in class 1 was neutralised by two factors, namely the exclusion of goods for diagnostic purposes from the designation of the goods covered by the application for registration and the fact that all the goods designated by the earlier mark 'in particular contain antibodies or antibody-type proteins or parts thereof'.
15. Accordingly, the Board of Appeal first dismissed the appeal as regards the application for registration in respect of 'extracts of medicinal plants for use in the pharmaceutical industry, not for diagnostic purposes' thereby upholding the opposition and, second, it allowed the appeal and dismissed the opposition as regards the application for registration with respect to the plant extracts concerned.

Procedure and forms of order sought

16. The applicant claims that the Court should:

annul the contested decision in so far as it dismisses the opposition with respect to the following goods: 'extracts of medical plants for use in the cosmetic and food industries, not for diagnostic purposes';

order OHIM to pay the costs.

17. OHIM contends that the Court should:

dismiss the application;

order the applicant to pay the costs.

18. At the hearing, the applicant produced a number of documents. OHIM stated that it did not challenge the admissibility of those documents, which has been noted by the Court. Those documents were added to the file by decision of the President of the First Chamber of the Court.

Law

19. In support of its application, the applicant raises a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.
20. This plea is based essentially on three complaints. The applicant claims that the Board of Appeal wrongly held that there was no similarity between the plant extracts concerned and, first, 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark in class 1, second, 'chemicals used in industry, science as well as in agriculture, horticulture and forestry' designated by the earlier mark in class 1 and, third, 'pharmaceutical and veterinary preparations' designated by the earlier mark in class 5.
21. It is appropriate to examine, first of all, the first complaint, alleging infringement of Article 8(1)(b) of Regulation No 40/94, that the Board of Appeal wrongly held that there was no similarity between the plant extracts concerned and 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark in class 1.

Arguments of the parties

22. The applicant agrees with the Board of Appeal that there is a high degree of similarity between the marks at issue and a close connection between the plant extracts concerned and the 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark in class 1. However, the applicant challenges the Board of Appeal's finding that, first, the similarity between the goods is called into question by the exclusion of goods for diagnostic purposes from the application for registration and according to which, second, the words 'in particular' used in the description of the goods designated by the earlier mark mean that all those goods contain 'antibodies or antibody'type proteins'.
23. Since the Board of Appeal stated that the similarity between the conflicting marks was such that an opposition concerning goods which are identical or very similar should succeed, the opposition should be upheld with respect to all the goods indicated in the application for registration.
24. OHIM contends that the plant extracts concerned and the goods designated by the earlier mark are not similar and that, consequently, the action should be dismissed.
25. In its view, the Board of Appeal rightly held that the qualification 'all the aforesaid goods in particular containing antibodies or antibody-type proteins or parts thereof' in the description of the goods designated by the earlier mark means that all those goods contain antibodies or antibody-type proteins. It is true that the words 'in particular' used in a list of goods generally serve to single out one class of goods which has a specific interest for the proprietor, without thereby excluding any other goods from the list. However, the meaning of that expression may vary. Thus, in this case, the words 'in particular' are preceded by the words 'all the aforesaid goods' which introduce an essential qualification and denote that all the listed goods are subject to the qualification introduced by the rest of the phrase. The only possible meaning of the phrase taken as a whole is that all the goods concerned contain antibodies or antibody type proteins, among other substances.
26. According to OHIM, only the objective meaning of the list of goods designated by the earlier mark is important and not the way in which the applicant interprets it or the applicant's intentions when drafting it. Where the list of goods is ambiguous, the text should be interpreted in the narrowest possible way so that the proprietor of the mark responsible for the ambiguity cannot profit from it.
27. OHIM observes that the presence of antibodies or proteins in the goods designated by the earlier mark, that is to say, elements of animal origin foreign to plant derivatives, is sufficient to render the nature, purpose and chemical properties of the goods covered by the conflicting marks, and therefore the goods themselves, clearly different.
28. It is true that, plant extracts being biological substances, it is acknowledged that the plant extracts concerned and 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark in class 1 would be identical if they were not subject to any qualification. However, the biological substances designated by the earlier mark, unlike the plant extracts concerned, all contain antibodies and are all used for diagnostic purposes. Moreover, the former are laboratory preparations whereas the latter are intermediate goods used in the manufacture of cosmetics or foodstuff. Therefore, those goods are not identical. Thus, their specific nature, purpose and method of use are different, they target different customers, are distributed through distinct commercial channels and they are neither complementary nor in competition with each other.

Findings of the Court

29. Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i), earlier trade marks means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
30. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception by the relevant public of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (Case T-162/01 Laboratorios RTB v OHIM Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II'2821, paragraphs 30 to 33, and judgment of 6 May 2008 in Case T-246/06 Redcats v OHMI Revert & Cía (REVERIE), not published in the ECR, paragraph 29).
31. A lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case T-443/05 El Corte Inglés v OHIM Bolaños Sabri (Piraà'AM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 36, and see, by way of analogy, Case C-39/97 Canon [1998] ECR I'5507, paragraph 17).
32. In this case, it is common ground that there is a high degree of similarity between the conflicting signs.
33. The applicant criticises the Board of Appeal for concluding that there was no likelihood of confusion because there was no similarity between the plant extracts concerned and the 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark in class 1.
34. Therefore, it is appropriate to ascertain whether the Board of Appeal's finding, that the plant extracts concerned and 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark in class 1 are not similar, is well founded.
35. In assessing the similarity of the goods covered by the conflicting marks, all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Canon, paragraph 31 above, paragraph 23, and Piraà'AM diseño original Juan Bolaños, paragraph 31 above, paragraph 37).
36. The Board of Appeal recognised that there was a similarity between plant extracts and biological preparations. However, it took the view that, in this case, that similarity was offset by two factors, namely the fact that, in the description of the goods set out in the application for registration, Indena expressly excluded plant extracts 'for diagnostic purposes', and that all the goods designated by the earlier mark 'in particular contain antibodies or antibody-type proteins or parts thereof'.
37. In the first place, it is appropriate to clarify the scope of the words 'in particular' used in the description of the goods designated by the earlier mark.
38. According to the case-law, the words 'in particular' used in the description of goods are indicative of an example (see, to that effect, Case T-224/01 Durferrit v OHIM Kolene (NU-TRIDE) [2003] ECR II-1589, paragraph 41).
39. Further, OHIM does not deny that the words 'in particular' used in a list of goods serve to distinguish the goods which have a specific interest for the proprietor of a mark, but do not thereby exclude any other goods on the list. However, OHIM rejects such an interpretation in this case on the grounds that the words 'in particular' are preceded by 'all the aforesaid goods' and that the list of goods designated by the earlier mark is ambiguous.
40. Those arguments are not convincing. The fact that the words 'in particular' indicate an example is not disputed where a list of goods is drafted as follows: 'biological preparations containing in particular antibodies'. The interpretation must be identical where the list of goods is wider and is drafted as follows: 'chemical preparations; biological preparations; pharmaceutical preparations; all these products containing in particular antibodies'. The expression 'all the aforesaid goods' used in the list of goods designated by the earlier mark is simply designed to avoid repetition of the phrase 'containing in particular antibodies' for each of the categories of goods mentioned. It follows that the list of goods designated by the earlier mark is not ambiguous and that the words 'in particular' which appears therein must be understood as simply listing a category of goods of particular interest to the applicant.
41. Therefore, it must be held that the description of the goods designated by the earlier mark concerns all biological preparations for laboratory analysis and diagnostics, those which contain antibodies or anti-body type proteins and those which do not. Therefore, the Board of Appeal committed an error by holding that the qualification contained in the description of the goods designated by the earlier mark in class 1 according to which 'all the aforesaid goods in particular containing antibodies or antibody-type proteins or parts thereof' means that all the goods mentioned contain such materials.
42. It follows that the Board of Appeal wrongly held that that qualification was an element which offset the similarity between the plant extracts concerned and 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark.
43. Second, it is appropriate to clarify the scope of the exclusion, in the description of the goods listed in the application for registration, of medicinal plant extracts used for diagnostic purposes. According to the Board of Appeal, that exclusion constitutes the second factor which offsets the similarity between the plant extracts concerned and 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark.
44. In that connection, it must be observed that goods used for analysis are intended to identify and/or quantify the constituents of a product, whereas products used for diagnoses are designed to identify an illness or the nature of the dysfunction. Analysis is a preliminary to diagnosis and not all analyses necessarily lead to a diagnosis. Products for analysis and those for diagnosis do not therefore have the same use and are not necessarily identical.
45. Therefore, first, the exclusion of medicinal plant extracts 'for diagnostic purposes' in the description of the goods listed in the application for registration does not also make it possible to exclude medicinal plant extracts used for analysis from that description. Second, OHIM's argument that all the biological preparations designated by the earlier mark are used for diagnostic purposes cannot be accepted as a number are used only for analysis.
46. Consequently, the Board of Appeal wrongly held that the exclusion of medicinal plant extracts used for diagnostic purposes from the description of the goods listed in the application for registration was such as to offset the similarity between medicinal plant extracts and 'biological preparations for laboratory analysis'.
47. It follows that neither the expression 'in particular' in the description of the goods designated by the earlier mark, nor the exclusion of the plant extracts concerned 'for diagnostic purposes' in the description of the goods listed in the application for registration is capable of completely eliminating the similarity between the plant extracts concerned and the biological preparations designated by the earlier mark.
48. Furthermore, OHIM's argument that the biological preparations designated by the earlier mark being laboratory products they have a different intended purpose from the plant extracts concerned which are intermediate goods designed to be used for the manufacture of cosmetics and foodstuffs, must be rejected.
49. The cosmetic and food industries have laboratories in which they undertake analyses. The description of the goods listed in the application for registration is not a ground for considering that they are only intermediate goods included in the composition of cosmetics or foodstuffs, or a ground for ruling out that the plant extracts concerned may be used to undertake analyses in laboratories in the cosmetics and food industries.
50. Accordingly, the plant extracts concerned and 'biological preparations for laboratory analysis and diagnostics' designated by the earlier mark may have a similar intended use. Thus, contrary to OHIM's claims, the plant extracts concerned and the biological preparations designated by the earlier mark may target the same customers through the same distribution channels and they may be in competition with each another.
51. It follows from all of the foregoing that the Board of Appeal wrongly held that there was no similarity between the plant extracts concerned and the 'biological preparations for laboratory analysis' designated by the earlier mark. Therefore, the Board of Appeal was also wrong to infer that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
52. The plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must therefore be upheld and the contested decision must be annulled in so far as it rejects the opposition with respect to the following goods: 'extracts of medicinal plants for use in the pharmaceutical, cosmetic and food industries, not for diagnostic purposes', without there being any need to examine the other two complaints concerning the similarity between the plant extracts concerned and the other goods designated by the earlier mark or to give a ruling on the documents produced by the applicant at the hearing.

Costs

53. Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by the applicant.

On those grounds,

THE COURT OF FIRST INSTANCE (First Chamber)

hereby:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 23 January 2007 (Case R 10/2006-2) in so far as it dismisses the opposition with respect to the following goods: 'extracts of medicinal plants for use in the pharmaceutical, cosmetic and food industries, not for diagnostic purposes';

2. Orders OHIM to pay the costs.




Tiili

Dehousse

Wiszniewska-Białecka

Delivered in open court in Luxembourg on 12 November 2008.

[Signatures]

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* Language of the case: English.