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

(Community trade mark Opposition proceedings ' Application for the figurative Community trade mark LifeScience ' Earlier Community trade mark Life Sciences Partners ' Relative ground for refusal ' Likelihood of confusion ' Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T-413/07,

Bayern Innovativ Bayerische Gesellschaft für Innovation und Wissenstransfer mbH, established in Nuremberg (Germany), represented by A. Beschorner, B. Glaser and C. Thomas, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM having been

Life Sciences Partners Perstock NV, established in Amsterdam (Netherlands),

ACTION brought against the decision of the First Board of Appeal of OHIM of 2 August 2007 (Case R 1545/2006'1), relating to opposition proceedings between Life Sciences Partners Perstock NV and Bayern Innovativ Bayerische Gesellschaft für Innovation und Wissenstransfer mbH,

composed of O. Czúcz, President, I. Labucka (Rapporteur) and K. O'Higgins, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 14 November 2007,

having regard to the response lodged at the Court Registry on 15 February 2008,

further to the hearing on 11 November 2008,

gives the following

Background

1. On 16 December 2003, the applicant, Bayern Innovativ Bayerische Gesellschaft für Innovation und Wissenstransfer mbH, 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. Registration was sought for the following figurative trade mark:
3. The goods and services for which registration was sought are in Classes 16, 35, 36, 41 and 42 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and, for each class, correspond to the following description:

Class 16: 'Paper, cardboard and goods made from these materials in Class 16; printing materials; writing stationery; typewriters and office requisites (except furniture); teaching materials (except apparatus); plastic materials for packaging in Class 16';

Class 35: 'Providing advertising services; management of business affairs; provision of business administration services; office work; all the aforesaid services, in particular in the field of technology transfer and innovation consultancy; organisation of trade fairs and exhibitions for commercial or advertising purposes; market research, analysis of market trends and market analysis in the field of national and international technologies';

Class 36: 'Insurance affairs; financial affairs, in particular in the field of risk capital procurement and financial support for technology transfer and consultancy on the associated financial support programmes; monetary transactions; real estate development services';

Class 41: 'Education; providing of training; organisation of trade fairs and exhibitions for entertainment, cultural or sporting purposes';

Class 42: 'Engineering services; computer programming, other than for air conditioning and environmental technology; providing of expert opinion; research and consultancy (technical and legal) into industrial property matters; management and exploitation of copyright; exploitation of industrial property rights'.

4. The application for a Community trade mark was published in Community Trade Marks Bulletin No 46/2004 of 15 November 2004.
5. On 10 February 2005, Life Sciences Partners Perstock NV filed a notice of opposition against registration of the mark applied for, on the basis of Community registration No 2136026 of 1 March 2002, concerning the figurative Community trade mark shown below:
6. The earlier trade mark covers the following services:

Class 35: 'Advertising and sales promotion; business management; business administration; office functions; business management and organisation consultancy; business economics consultancy; drafting statistics; marketing manipulation, marketing research and marketing analysis; opinion polling; composing and operating databases';

Class 36: 'Insurances; financial affairs; monetary affairs; real estate affairs and acting as a intermediary for real estate sales; capital and other investments; consulting and acting as an intermediary in the field of granting of credits'.

7. The opposition was directed at all the services covered by the earlier registration and related to all the goods and services covered by the mark applied for. The ground relied on in support of the opposition was the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
8. By decision of 16 October 2006, the Opposition Division upheld the opposition in part. In essence, the Opposition Division found that the services in Classes 35 and 36 were identical and that the signs were sufficiently similar for there to be a likelihood of confusion. The opposition was dismissed as to the remainder on the ground that the services covered by the earlier trade mark were different from the goods and services in Classes 16, 41 and 42 covered by the mark applied for.
9. On 24 November 2006, the applicant filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the decision of the Opposition Division in so far as it refused to register the mark applied for in respect of the services in Classes 35 and 36.
10. By decision of 2 August 2007 ('the contested decision'), the First Board of Appeal confirmed that there was a likelihood of confusion between the two conflicting marks in relation to the services in Classes 35 and 36 and dismissed the appeal.

Forms of order sought by the parties

11. The applicant claims that the Court should:

annul the contested decision;

dismiss the opposition;

order the registration of the mark applied for;

order OHIM to pay the applicant's costs before the Court of First Instance and order Life Sciences Partners Perstock to pay the applicant's costs before the Board of Appeal.

12. OHIM claims that the Court should:

dismiss the action;

order the applicant to pay the costs.

Law

Admissibility of the second and third forms of order sought

13. OHIM challenges the admissibility of the second and third forms of order 'to the extent that [they request] an order to dismiss the opposition and register the mark applied for'.
14. As regards the second form of order sought, the applicant submitted at the hearing that, in effect, it was asking the Court to adopt the decision that, according to the applicant, OHIM ought to have taken, namely a decision finding that the conditions for allowing an opposition had not been fulfilled. Consequently, the applicant demands that the contested decision be altered, as provided for in Article 63(3) of Regulation No 40/94.
15. The applicant is not asking the Court to issue an order to OHIM to take or not to take such a decision, which would amount to asking the Court to issue directions to the defendant. On the contrary, the applicant asks the Court to decide, just like the Board of Appeal, whether the mark applied for can be registered in the light of Article 8(1)(b) of Regulation No 40/94 (see, to that effect, Case T-334/01 MFE Marienfelde v OHIM Vétoquinol (HIPOVITON) [2004] ECR II-2787, paragraph 19, and judgment of 4 October 2006 in Case T-190/04 Freixenet v OHIM (Shape of a frosted white bottle), not published in the ECR, paragraphs 16 and 17).
16. Therefore, OHIM was wrong to classify the request for an amendment which the applicant makes by way of its second form of order sought as a request for directions. It follows that the plea of inadmissibility put forward by OHIM must be rejected.
17. By its third form of order sought, the applicant asks the Court to order OHIM to register the mark applied for. In this respect, it must be recalled that, under Article 63(6) of Regulation No 40/94, the Office is to take the measures necessary to comply with the judgment of the Community Court. Accordingly, the Court is not entitled to issue directions to the Office. It is for the latter to draw the appropriate inferences from operative part of this judgment and the grounds on which it is based (see, to that effect, Case T-331/99 Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform) [2001] ECR II-433, paragraph 33, and Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 12). Therefore, the applicant's third form of order sought must be rejected as inadmissible.

Admissibility of annexes 6 to 8 of the application

18. OHIM challenges the admissibility of the documents in annexes 6 to 8 of the application, on the ground that they were not submitted at an earlier stage in the administrative procedure.
19. At the hearing, the applicant submitted that the annexes at issue enabled it to show that the analysis in the contested decision, according to which the expression 'life science' was not used in connection with the services in Classes 35 and 36, was wrong. Therefore, according to the applicant, those annexes are admissible (Case T-363/04 Koipe v OHIM Aceites del Sur (La Española) [2007] ECR II-3355, paragraph 77).
20. In accordance with settled case-law, the purpose of actions brought before the Court is to review the legality of decisions of the Boards of Appeal within the meaning of Article 63 of Regulation No 40/94. Facts which are pleaded before the Court without having previously been brought before the departments of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion. It follows from the concluding words of Article 74(1) of Regulation No 40/94, according to which, in proceedings relating to relative grounds for refusal of registration, OHIM is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, that OHIM is not required to take into account of its own motion facts which have not been put forward by the parties. Therefore, such facts cannot affect the legality of a decision of the Board of Appeal (Case T-115/03 Samar v OHIM Grotto (GAS STATION) [2004] ECR II-2939, paragraph 13, and Case T-269/02 PepsiCo v OHIM Intersnack Knabber-Gebäck (RUFFLES) [2005] ECR II-1341, paragraph 35). The Court is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of Community law made by that board, particularly in the light of facts which were submitted to the latter. By contrast, that Court cannot carry out such a review by taking into account matters of fact newly produced before it (Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 54).
21. The file shows that the documents in annexes 6 to 8 were not produced before OHIM. Consequently, as OHIM contends, those documents cannot be taken into consideration by the Court.

Substance

22. In support of its application, the applicant relies on a single plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94. The applicant submits that there is no likelihood of confusion between the trade marks at issue.
23. OHIM contends that the Board of Appeal was correct in finding that there is a likelihood of confusion.
24. In accordance with Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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. Moreover, pursuant to Article 8(2)(a)(i) of Regulation No 40/94, 'earlier trade marks' means, inter alia, 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.
25. 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 (Case T-104/01 Oberhauser v OHIM Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 25; see also, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 29, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17).
26. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the perception in the minds of the relevant public of the marks and the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and the similarity between the relevant goods or services (see Case T-162/01 Laboratorios RTB v OHIM ' Giorgio Beverly Hills(GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 31 to 33, and the case-law cited).
27. The parties did not challenge the Board of Appeal's finding, in paragraph 12 of the contested decision, that the services covered by the earlier mark and the services in Classes 35 and 36 covered by the mark applied for are identical. Therefore, in the light of the foregoing considerations, the comparison of the conflicting signs is the only matter to be considered.
28. In must be recalled, in this respect, that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30, and the judgment of 26 January 2006 in Case T-317/03 Volkswagen v OHIM Nacional Motor(Variant), not published in the ECR, paragraph 46).
29. The parties agree that the relevant public is essentially an English-speaking public, made up of professionals searching for advice in relation to their business activities.

Comparison of the conflicting signs

30. The global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the conflicting signs, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (Case T-292/01 Phillips-Van Heusen v OHIM ' Pash Textilvertrieb und Einzelhandel(BASS) [2003] ECR II-4335, paragraph 47).
31. As regards visual similarity, a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where this component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark make a negligible contribution to the overall impression created by it (MATRATZEN, paragraph 33).
32. Moreover, even the fact that two conflicting marks comprise similar word elements is not in itself sufficient to justify the conclusion that the conflicting signs are visually similar. If one of the signs contains figurative elements in an individual and original configuration, the overall impression conveyed by each sign is likely to be different (see, to that effect, Case T-156/01 Laboratorios RTB v OHIM Giorgio Beverly Hills (GIORGIO AIRE) [2003] ECR II-2789, paragraphs 73 and 74).
33. In addition, it must be recalled that, with regard to the assessment of the dominant character of one or more given components of a complex trade mark, account may also be taken, at a subordinate level, of the relative position of the various components within the arrangement of the complex mark (see, to that effect, MATRATZEN, paragraph 35).
34. The applicant submits that the figurative elements of the conflicting marks constitute the dominant elements. Those figurative elements of the signs are substantially different. Given that the word elements are not the dominant elements, it submits that there is no need to examine the phonetic and conceptual characteristics of the signs at issue.
35. OHIM contends that the word elements and the figurative elements are 'equally 'dominant' in the signs because they have an 'equivalent power of attraction' and will both be memorized by the public as elements of identification of the marks'.
36. Moreover, the difference between the graphic elements of the conflicting marks is not sufficient to preclude the likelihood of confusion, because the relevant public is aware of the fact that it is much easier for an undertaking to change its logo than its business name.
37. According to OHIM, the conflicting signs have a high degree of similarity, both phonetically and conceptually. By contrast, the degree of visual similarity is not decisive. Nevertheless, the elements of visual dissimilarity are not such as to undermine the finding that there is 'at least a certain degree of overall similarity between the signs' at issue.
38. The Court finds that both of the marks at issue are made up of a figurative element placed above a word element; however, it does not follow that the figurative element visually dominates the image that the relevant public keeps in mind. Although they are visible, it is very unlikely that the public would easily recognise and ascribe an origin to the respective figurative elements of the marks at issue. The relevant public would refer to the signs at issue orally and would remember them as much by their name as by their figurative elements. As OHIM submits, the word elements and the figurative elements of the conflicting signs therefore have an 'equivalent power of attraction' and the public will remember them as elements by which to identify the marks at issue.
39. As regards the word elements, it must be held that the first part of the earlier mark's word element, 'life sciences', is almost entirely reproduced (with the exception of the final letter 's') in the word element of the mark applied for, 'lifescience'. The fact that the mark applied for uses a capital letter 's' means that the missing space between 'life' and 'science' is hardly noticeable; at the same time, it is not easy to make out the letter 's' at the end of the first part of the word element of the earlier mark.
40. As regards the figurative elements, as the Board of Appeal found, the earlier mark, in black and white, represents the silhouette of a naked woman wrapped in a spiral resembling a DNA chain (paragraph 17 of the contested decision); the mark applied for, in blue, yellow and orange, consists of a spiral resembling a DNA chain, an oval shape, which can be associated with a globe, and a grid pattern which is supposed to be the symbol of Bavaria (Germany) (paragraph 16 of the contested decision).
41. Accordingly, the Board of Appeal was correct in its finding that the marks at issue have a low degree of visual similarity, limited to similarity of the word elements and the helicoidal shape resembling the DNA chain (paragraph 18 of the contested decision).
42. As regards the phonetic comparison, the Board of Appeal found that the conflicting marks were very similar, since the elements 'lifescience' and 'life sciences', when pronounced according to the rules of English pronunciation, sound almost identical. The word element 'partners' of the earlier mark does not make a significant difference, because it is descriptive and might therefore be omitted when the mark is pronounced (paragraph 19 of the contested decision).
43. The Court finds that the phonetic analysis undertaken by the Board of Appeal is correct. The element shared by the two conflicting signs is the first part of the earlier mark ('life sciences'), which consists of three words, 'life', 'sciences' and 'partners'. In addition, it must be held that the word element 'partners' of the earlier mark is secondary, appearing as if it were a mere addition to the element 'life sciences'. It is a term that is frequently used in all commercial sectors in English-speaking regions of the European Community, and one which is probably omitted when the relevant public pronounces the earlier mark.
44. Therefore, the marks at issue are phonetically similar.
45. Conceptually, it must be recalled that the Board of Appeal found that the conflicting marks had a high degree of similarity because of their word elements. According to the Board of Appeal, both evoke the notion of 'life science', which is likely to be identified as biology or a related science (paragraphs 20 and 22 of the contested decision).
46. It is obvious that both of the conflicting marks refer to biotechnology, that is, to some branch of natural sciences devoted to the structure and behaviour of living organisms. The spirals that are reproduced in the conflicting marks are associated by the relevant public with DNA chains and they likewise evoke biotechnology. Consequently, the figurative elements reinforce the significance of the word elements 'lifescience' or 'life sciences' and therefore contribute significantly to the general conceptual similarity between the signs at issue.
47. Consequently, the conceptual similarity between the conflicting signs must be confirmed, both because of their word elements and because of some of their figurative elements.

Overall assessment of the likelihood of confusion

48. In the present case, it must be held, as the Board of Appeal found in paragraph 21 of the contested decision, that, overall, the conflicting marks are very similar. None the less, even though they are phonetically and conceptually very similar, there are certain differences from a visual point of view.
49. Therefore, it is necessary to determine whether the difference established between the visual elements of the conflicting marks may outweigh their phonetic and conceptual similarities, taking into account the nature of the services at issue.
50. According to the case-law, in the context of the global assessment of the likelihood of confusion, the respective weight to be given to the visual, phonetic or conceptual aspects of the conflicting signs may differ according to the objective conditions under which the marks may be present on the market (Case T-129/01 Alejandro v OHIM Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 57, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 49).
51. Thus, if the goods covered by a given mark are sold only by being ordered orally, the phonetic aspects of the sign in question will as a general rule have greater significance for the relevant public than the visual aspects (see, to that effect, NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 49).
52. In the present case, the services at issue are services in Classes 35 and 36, which, taking into account their nature, are usually referred to orally.
53. As regards the applicant's argument that the earlier mark is of weak distinctive character, it must be recalled that the Board of Appeal found, in paragraph 22 of the contested decision, that the terms 'lifescience' and 'life sciences' are used in trade in their literal sense, that is to say, in relation to the concept of 'life science', which is likely to be identified as biology or a related science (health care, medical research, etc.).
54. In the light of all the foregoing, the Board of Appeal was entitled to find that the word element of the earlier mark is 'of normal distinctiveness in relation to the services in Classes 35 and 36'.
55. That finding is not undermined by the applicant's argument that to allow the opposition would be equivalent to denying any trader the right to use the expression 'life science' when advertising consultancy services or business and real estate management.
56. In this respect, OHIM submitted at the hearing that that argument based on exclusive use was unfounded. According to OHIM, the applicant seeks to promote the mark applied for in such a way that the public refers to it orally as 'life science'. However, according to OHIM, that is not making descriptive use of the expression. Moreover, Article 12(b) of Regulation No 40/94 provides explicitly that the proprietor of a Community trade mark cannot prohibit a third party from using certain elements of its mark in a manner that is descriptive. The relevant public could very well take the mark applied for to be an updated version of the earlier mark.
57. The Court holds in this respect that, although Article 12(b) of Regulation No 40/94 according to which the right conferred by a Community mark does not entitle the proprietor to prohibit a third party from using 'indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service' expressly provides for a derogation from the exclusive rights of the mark where the protected mark is used in a descriptive manner, it is clear from the foregoing that no such descriptive use is being made in the present case.
58. It follows from all of the foregoing that, in the circumstances of the present case, there is a likelihood of confusion between the marks at issue. Given the identical nature of the services at issue and the similarity of the conflicting marks, the higher level of attention of the relevant public is not sufficient to rule out the risk of that public believing that the services are being offered by the same undertaking or, as the case may be, by economically-linked undertakings.
59. Consequently, the single plea must be rejected.
60. As regards the demand that the contested decision be altered, it must in the light of the foregoing considerations likewise be rejected.
61. Consequently, the action must be dismissed in its entirety.

Costs

62. 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 the applicant has been unsuccessful, it must be ordered to pay the costs, as applied for by OHIM.

On those grounds,

THE COURT OF FIRST INSTANCE (Fourth Chamber)

hereby:

1. Dismisses the action;

2. Orders Bayern Innovativ Bayerische Gesellschaft für Innovation und Wissenstransfer mbH to pay the costs.

Czúcz

Labucka

O'Higgins

Delivered in open court in Luxembourg on 11 February 2009.

[Signatures]

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* Language of the case: English.