Boston Scientific v OHMI - Terumo (CAPIO) (Intellectual property) [2008] EUECJ T-325/06 (10 September 2008)

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(Community trade mark - Opposition proceedings - Application for Community word mark CAPIO - Earlier national word mark CAPIOX - Relative ground for refusal - Genuine use of the mark - Article 43(1) and (2) of Regulation (EC) No 40/94 - Likelihood of confusion - Article 8(1)(b) of Regulation No 40/94)

1 On 29 January 2002, Boston Scientific Ltd filed an application for 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 trade mark for which registration was sought is the word mark CAPIO for the following goods in Class 10 within the meaning 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: -�Surgical, medical, dental and veterinary apparatus and instruments, in particular apparatus for placing a suture; artificial limbs, eyes and teeth; orthopaedic articles; suture materials-�.

3 The trade mark application was published in the Community Trade Marks Bulletin No 5/2003 of 13 January 2003.

4 On 3 April 2003, the list of products covered by the trade mark application was restricted to the products in Class 10 corresponding to the following description: -�Surgical, medical, dental and veterinary apparatus and instruments, in particular apparatus for placing a suture; artificial limbs, eyes and teeth; orthopaedic articles except orthopaedic bandages, corsetry and hosiery; suture materials-�.

5 On 14 April 2003, Terumo Kabushiki Kaisha filed a notice of opposition to the trade mark applied for, alleging that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. That opposition was based on the earlier registration of the following word marks:

6 The intervener bases its opposition on all the goods covered by its earlier registrations and has directed it against all the goods listed in the application.

7 On 7 April 2004, in the course of the opposition proceedings, the list of goods in the application for registration was further restricted, pursuant to Article 44 of Regulation No 40/94, to the following goods: -�apparatus for placing a suture-� in Class 10.

8 In the course of the proceedings, the applicant requested that proof be furnished that the earlier trade marks cited as justification for the opposition had been put to genuine use; the Opposition Division accordingly asked the intervener, pursuant to Article 43(2) and (3) of Regulation No 40/94 and Rule 22 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), to furnish that proof within two months.

9 The intervener produced various documents within the period laid down in order to show that the mark cited as justification for the opposition had been put to genuine use in Finland. The other national trade mark rights were not subject to proof of use since they were not substantiated within the deadline set by OHIM. Therefore, they were not taken into account.

10 By decision of 28 October 2005, the Opposition Division rejected the opposition for all the goods in issue. It considered that proof of genuine use of the Finnish registration had been furnished only as regards hollow fiber oxygenators with detachable hard-shell reservoir. According to the Opposition Division, there was only a very low degree of similarity between those latter goods and the apparatus for placing a suture covered by the mark applied for. As regards comparison of the signs, the Opposition Division found that the letter -�x-� at the end of the earlier mark was an important element of differentiation between the conflicting signs, given that use of that letter is very uncommon in Finland. As regards the Community registration, the Opposition Division found, on the one hand, that the goods concerned, namely oxygenators and their component parts, had a very low degree of similarity with the apparatus for placing a suture covered by the mark applied for and, on the other hand, that the differences between the signs were even more noticeable than in the case of the Finnish registration. The Opposition Division therefore concluded that, since the relevant public was highly specialised, the low degree of similarity between the goods and the differences between the signs excluded any likelihood of confusion.

11 On 21 December 2005, the intervener appealed against the decision of the Opposition Division.

12 By decision of 14 September 2006 (the -�contested decision-�), the Second Board of Appeal annulled the decision of the Opposition Division and upheld the opposition in its entirety. The Board of Appeal limited its assessment of the likelihood of confusion to a comparison of the mark applied for with the Finnish trade mark No 108926 and found that, given the nature of the goods at issue, the relevant public was made up of Finnish professionals. The Board of Appeal confirmed the fact that the intervener had substantiated genuine use of the trade mark CAPIOX in Finland only in respect of hollow fiber oxygenators with detachable hard-shell reservoir. As regards comparison of the goods, the Board of Appeal found, in essence, that even though such oxygenators would have a different method of use from that of apparatus for placing a suture, they were closely linked. Those goods had a certain complementary character as they could be used simultaneously during surgery. The goods could be purchased through the same distribution channels and it was possible that a company could manufacture the goods at issue at the same time. As regards comparison of the signs, the Board of Appeal found that they had a high degree of similarity. Visually, the conflicting signs were composed of the same group of letters, namely -�capio-�, arranged in the same order, the only difference being the letter -�x-� at the end. Phonetically, the presence of that letter -�x-� was also the only difference and, from a conceptual point of view, neither of the two signs seemed to have any apparent meaning. The Board of Appeal considered that, although the letter -�x-� was very uncommon in Finnish, that was not the case in the medical field. The Board of Appeal concluded that it was more than likely that the relevant public would believe that the conflicting signs came from the same undertaking or economically-linked undertakings and therefore annulled the decision of the Opposition Division.

16 The applicant puts forward two pleas in law alleging, first, infringement of Article 43(2) and (3) of Regulation No 40/94 and, second, infringement of Article 8(1)(b) of that regulation.

The first plea, alleging infringement of Article 43(2) and (3) of Regulation No 40/94

17 The applicant claims that the proof of use submitted by the intervener was insufficient to substantiate genuine use of the earlier trade mark within the meaning of the first sentence of Article 43(2) of Regulation No 40/94, and that the opposition should have been rejected for that reason.

18 The applicant submits that, as the decision of the Opposition Division shows, only the Finnish trade mark CAPIOX and the Community trade mark CAPIOX PULSE are to be examined in the context of these proceedings, in so far as no relevant document was submitted as proof of the validity of the other marks, which, moreover, the intervener has conceded. The applicant points out that only the Finnish mark CAPIOX was examined for the purpose of determining likelihood of confusion.

19 The applicant takes the view that the documents submitted to prove genuine use of the trade mark CAPIOX, namely promotional material, purported sales data and invoices, did not enable such use to be established for the purpose of Article 43(2) and (3) of Regulation No 40/94 and Rule 22(2) of Regulation No 2868/95.

20 First, as regards the promotional material, the applicant notes that this was not drafted in Finnish, but in English, German, French and Spanish and in Cyrillic script, so that it is doubtful, in the absence of evidence to the contrary, that the material was distributed in Finland. In addition, with only few exceptions, the mark CAPIOX does not appear on the goods themselves, but separately, together with additional distinctive components. As regards copies of labels, there is no indication of the exact kind of goods to which they were affixed or even whether they were affixed at all; moreover, no information was provided as to the market on which such products were available.

21 Second, as regards the purported sales data for CAPIOX products, the applicant notes that no person of authority from within the intervener-�s company provided an affidavit or any other statement pursuant to Article 76(1)(f) of Regulation No 40/94 and Rule 22 of Regulation No 2868/95. The internal sales data document does not even specify who issued it. The schedule does not give clear and plausible indication of the following: first of all, of the products to which the sales data refer, with no evidence that the codes listed under -�item-� actually refer to the brochures, second, of the turnover achieved and the currency, and, finally, of the relevant country. It would have been easy for the intervener to provide clear and plausible information concerning the turnover achieved in respect of each product carrying the CAPIOX trade mark in Finland.

22 Third, as regards the invoices submitted in relation to goods sold under the Capiox trademark, the applicant submits that those invoices are addressed to customers in the Netherlands and in Belgium and should be disregarded, since the existence of trademarks concerned has not been established, and that only one invoice is addressed to customers in Finland. In this respect, the items mentioned in those invoices refer, first, to Capiox SX Open System (12 pieces for a total of EUR 2 208) and, second, to a product called Capiox SX Holder Open System and a product called Capiox SX Holder, without any indication as to the price, as well as to other products without any reference to the trademark or price indication. The applicant submits that it is not obvious what the product described as -�SX Open System-� is. A turnover of EUR 2 208 achieved with 12 pieces cannot be regarded as reflecting sufficient use of a trade mark, particularly as it cannot be inferred from the various invoices that the product mentioned is one of the products for which the intervener-�s trade mark claims protection. No statement or comparable evidence was submitted to show that the invoices at issue had actually been sent to Finnish customers and that the turnover of EUR 2 208 was achieved with relevant goods bearing the CAPIOX trademark. Finally, no proof of use was adduced for the CAPIOX PULSE trademark.

23 It follows that no proof of genuine use has been adduced as to the place, time, extent or nature of use. Thus, it has not been established that the sum (2 208) indicated on the invoice generated for the Capiox SX Open System, namely 12 pieces delivered in Finland, is expressed in euros. In addition, even assuming that the sum is expressed in euros, the information relating to the sales of the goods is inconsistent. Thus, the list relating to turnover states as follows:

24 According to the applicant, it is clear from the figures for Finland in that list and in the invoice of 29 November 2001 that those figures are not consistent, and the applicant wonders why the figures in the invoice do not appear in the list and vice versa. It is not possible to establish a logical connection between the data. Therefore, contrary to what the Board of Appeal decided (paragraph 21 of the contested decision), there is no genuine use in Finland within the meaning of the judgment in Case C-40/01 Ansul [2003] ECR I-2439, paragraph 43. The Court did not say that the proprietor of a trade mark did not have to provide verifiable documents and reliable information as regards the use of its trade mark. In this respect, if the sale of 12 units was sufficient to establish genuine use of a trade mark, the monopoly thus created in a sign could undermine the essential principle of the free movement of goods.

26 It should be noted that, according to the ninth recital in the preamble to Regulation No 40/94, the legislature considered that protection of an earlier trade mark is not justified except where it is actually used. Consistently with that recital, Article 43(2) and (3) of Regulation No 40/94 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the period of five years preceding the date of publication of the trade mark application against which an opposition has been filed (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM - Harrison (HIWATT) [2002] ECR II-5233, paragraph 34; judgment of 27 September 2007, Case T-418/03 La Mer Technology v OHIM- Laboratoires Goëmar (LA MER), paragraph 51, and the case-law cited).

27 Under Rule 22(2) of Regulation No 2868/95, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark (Case T-203/02 Sunrider v OHIM - Espadafor Caba (VITAFRUIT) [2004] ECR II-2811, paragraph 37, upheld on appeal in Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237, and LA MER, paragraph 26 above, paragraph 52).

28 In the interpretation of the notion of genuine use, account must be taken of the fact that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the mark on the market (Case T-174/01 Goulbourn v OHIM - Redcats (Silk Cocoon) [2003] ECR II-789, paragraph 38). However, the purpose of that provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (VITAFRUIT, paragraph 27 above, paragraph 38, and LA MER, paragraph 26 above, paragraph 53).

29 As is apparent from paragraph 43 of the judgment in Ansul, cited above at paragraph 24, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it was registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Moreover, the condition of genuine use of the mark requires that that mark, as protected on the relevant territory, be used publicly and externally (see LA MER, paragraph 26 above, paragraph 54, and the case-law cited; see, by analogy, Ansul, paragraph 24 above, paragraph 37).

30 In the assessment of whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned in order to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see LA MER, paragraph 26 above, paragraph 55, and the case-law cited there; see, by analogy, Ansul, paragraph 24 above, paragraph 43).

31 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 27 above, paragraph 41; see also LA MER, paragraph 26 above, paragraph 56, and the case-law cited there).

32 To examine whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. As a result, the Court has stated that use of the earlier mark need not always be quantitatively significant in order to be deemed genuine. Even minimal use can therefore be sufficient to be deemed genuine, provided that it is viewed as warranted in the economic sector concerned in order to maintain or create a share in the market for the goods or services protected by the mark (VITAFRUIT, paragraph 27 above, paragraph 42, and LA MER, paragraph 26 above, paragraph 57; see, by analogy, Ansul, paragraph 24 above, paragraph 39, and the order in Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 21).

33 The Court of Justice also added, in paragraph 72 of the judgment in Sunrider v OHIM, paragraph 27 above, that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not, which means that a de minimis rule, which would not allow OHIM or, on appeal, the Court of First Instance, to appraise all the circumstances of the dispute before it, cannot therefore be laid down. Thus, the Court of Justice has held that, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (LA MER, paragraph 26 above, paragraph 58).

34 Furthermore, the Court of First Instance has specified that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (Case T-356/02 Vitakraft-Werke Wührmann v OHIM - Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 28, and LA MER, paragraph 26 above, paragraph 59).

35 It is in the light of those considerations that the Court must examine whether the Board of Appeal was right when it agreed, in paragraph 21 of the contested decision, with the Opposition Division-�s finding that the evidence of use provided was sufficient to establish that the earlier mark had been used for the purpose of trading in hollow fiber oxygenators with detachable hard-shell reservoir so as to generate goodwill and not for the sole purpose of safeguarding the monopoly granted by the registration in Finland, and that the sales figures and invoices concerning Finland for such a specialised, and surely expensive, product, together with the promotional material, were quite sufficient to prove that use of the trade mark CAPIOX had been genuine.

36 Since the application for a Community trade mark filed by the applicant was published on 13 January 2003, the period of five years laid down in Article 43(2) of Regulation No 40/94 runs from 13 January 1998 until 13 January 2003 (-�the relevant period-�).

37 It must be noted that the intervener submitted the following evidence to the Opposition Division concerning use of the trade mark CAPIOX in Finland:

- two advertising brochures for the CAPIOX® SX Series Oxygenators in English, dated April 1999 and 2000, each including brochures for the CAPIOX® SX 10, the CAPIOX® SX 18 and the CAPIOX® SX 25;

- two advertising brochures for the CAPIOX® Hemoconcentrator HC 11/HC 05 in English, dated June 1999 and 2000;

- one advertising brochure for the CAPIOX® Arterial Filter for Pediatric Use in English, dated 2000;

- one advertising brochure for the Xcoating™ CAPIOX® Adult Arterial Filter in English, dated 2000;

- one advertising brochure for the CAPIOX® Arterial Filter AF 125 in English, dated May 2002;

- one advertising brochure for the CAPIOX® Cardioplegia in English, dated 2001;

- one advertising brochure for the CAPIOX® Venous Reservoir in English, dated 1998;

- one advertising brochure for the Xcoating™ for CAPIOX® and Sarns™ perfusion circuit products in English, dated 2000;

- one advertising brochure for the CAPIOX® Cardiotomy Reservoir and Hardshell Venous Reservoir in English, dated 2000;

- one advertising brochure for the CAPIOX® II Hollow Fiber Oxygenator with Integrated Heat Exchanger in English, dated 1983;

- one advertising brochure for the CAPIOX® RX 25 with Xcoating™ in English, dated 2003;

- one advertising brochure for the mini RX™ Reduced Prime Perfusion Circuit with Xcoating™ in English, dated 2003;

- six advertising brochures for the CAPIOX® RX 05 BABY-RX™ with Xcoating™, two in English, dated 2000 and 2003, one in French, one in German, one in Spanish and one in Cyrillic script, dated 2003;

- two identical advertising brochures for the CAPIOX® RX 25 Xcoating in English, dated 2000;

- twelve labels all bearing the word CAPIOX® concerning products with the following codes: CX*SX18R (1), CX*SX18 (1), CX*RX25 (1), CX*RX25R (1), CX*CR10 (1), CX*CR40 (1), CX*BT05 (1), CX*AF02 (1), ZZ*CP50 (1), ZZ*HC11S (2, with one label incomplete), and SP PUMP (1);

- invoice No 0089117269, of 14 December 1999, for the amount of NLG 15 600, drawn up in the name of a Dutch company and concerning the sale of the CX=SX18R CAPIOX SX OPEN SYSTEM;

- invoice No 0020118787, of 6 December 2000, for the amount of NLG 3 900, drawn up in the name of a Dutch company and concerning the sale of the CX*SX10R Paediatric oxyg + reservoir;

- invoice No 10000685, of 28 November 2001, for the amount of EUR 24 776.40, drawn up in the name of a Dutch company and concerning the sale of the CX=SX18R CAPIOX SX OPEN SYSTEM;

- invoice No 002000558, of 15 April 2002, for the amount of EUR 1 769.76, drawn up in the name of a Dutch company and concerning the sale of the CX*SX10R Paediatric oxyg + reservoir;

- invoice No 003000360, of 11 April 2003, for the amount of EUR 17 697.43, drawn up in the name of a Dutch company and concerning the sale of the CX*SX18R CAPIOX SX OPEN SYSTEM;

- invoice No 1001360, of 7 December 2001, for the amount of BEF 208 580, drawn up in the name of a Belgian company and concerning the sale of the Soft-Flow Cannula, CX*RX25 and Dual Stage;

- invoice No 2001346, of 2 May 2002, for the amount of BEF 0, drawn up in the name of a Belgian company and concerning the sale of the CX*SX25 CAPIOX SX CLOSED SYSTEM;

- invoice No 002013938, of 10 March 2003, for the amount of EUR 8 282.43, drawn up in the name of a Belgian company and concerning the sale of the CX*SX18R CAPIOX SX OPEN SYSTEM and ST.-CAMILLE W SENSOR;

- invoice No 0099601695, of 12 June 1998, for the amount of BEF 100 672, drawn up in the name of a Belgian company and concerning the sale of the CX*SX10R Paediatric oxyg + reservoir;

- invoice No 0020119392, of 22 December 2000, for the amount of BEF 107 932, drawn up in the name of a Belgian company and concerning the sale of the CX*RX25R HOLLOW FIBER OXYGENATOR W/HV;

- invoice No 0021710939, of 29 October 2001, for the amount of EUR 2 208, drawn up in the name of a Finnish company and concerning the sale of the CX=SX25R CAPIOX SX OPEN SYSTEM and a gift of various other products.

38 In the light of that evidence, it must be pointed out that, as the advertising brochures clearly show, hollow fiber oxygenators with detachable hard-shell reservoir belong to the SX series. Moreover, that information is given in the 2004 sales catalogue, which, although dating from after the relevant period, simply confirms the information that the abbreviation in the documents submitted to the Board of Appeal does indeed refer to those oxygenators. In this respect, it must be noted that in the assessment of the genuineness of use during the relevant period, account can be taken, where appropriate, of any circumstances subsequent to filing. Such circumstances may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (see, as regards the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), order in La Mer Technology, paragraph 32 above, paragraph 31).

39 In the first place, as regards the list of sales of CAPIOX products, which is submitted in the form of a table stating the year, country, identification code, products concerned, quantities and prices, it is true that the data given there are not supported by an affidavit or statement by a person of authority, in accordance with Article 76(1)(f) of Regulation 40/94 and Rule 22 of Regulation No 2868/95. However, contrary to what the applicant claims, such a finding cannot lead to a refusal to take that document into consideration.

40 It must be recalled that, in order to assess the evidential value of a document, regard should be had, first, to the credibility of the account it contains. It is then necessary to take account of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (Case T-303/03 Lidl Stiftung v OHIM-REWE-Zentral (Salvita) [2005] ECR II-1917, paragraph 42).

41 It follows that the evidential value of that document can be determined by means other than an affidavit or statement as referred to in Article 76(1)(b) of Regulation No 40/94 and Rule 22 of Regulation No 2868/95.

42 In this respect, it is noted that that document came from the intervener and that it provides precise information concerning sales, since it is in the form of a table composed of several separate columns showing, respectively, the year, country, identification code, products concerned, quantities and price. That document therefore constitutes a summary of the intervener-�s sales in a geographic zone determined by it.

43 In addition, it must also be noted that, among the various products sold under the CAPIOX trade mark in Finland during the relevant period, those sold in Finland in 2001 - which are listed on invoice No 0021710939 of 29 October 2001, made out to a Finnish company, for the amount of EUR 2 208, as consideration for 12 oxygenators (CX=SX25R) - appear on that list of sales. It is certainly true that the amount shown on that invoice (EUR 2 208) is different from that given in the list of sales (1 943.66, without any mention of currency). Nevertheless, from the explanation given by the intervener, which was not contested by the applicant at the hearing, following a question to that effect by the Court of First Instance, it is clear that the difference is due to the fact that the price appearing on the invoice, which is given in euros, is then converted into United States Dollars (USD); that is confirmed by the exchange rate that applied when the invoice was drawn up and is not contrary to practices current in international trade in the goods at issue. It follows that, contrary to what the applicant claims, the exchange value in USD of the amount given in euros on the said invoice does, in effect, appear on the list of sales, so that there is no inconsistency.

44 It follows that the consistency and veracity of the list of sales is established, in particular, by the fact that certain elements of the invoice appear on it, including the date, the nature of the goods concerned and the exchange-value of the amount stated. Accordingly, the list of sales constitutes a reliable document and the Board of Appeal was right to take it into consideration in order to establish genuine use of the trade mark.

45 In the second place, as regards the fact that, in this case, proof of use of the earlier trade mark has been furnished solely in the form of a single invoice addressed to a single customer in Finland, on the one hand, it must be pointed out that proof of use was also furnished in the form of the list of sales inasmuch as, as is apparent from paragraph 37 above (Annex II), there were other sales of hollow fiber oxygenators with a detachable hard-shell reservoir in Finland.

46 On the other hand, even though a single invoice was furnished to OHIM as proof of genuine use, it must be held that, despite the fact that it follows that the mark was not present in a substantial part of the territory of Finland, in which it is protected, the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not (see, to that effect, Case C-416/04 P Sunrider v OHIM, paragraph 27 above, paragraph 76; see also to that effect and by analogy, order in Case C-259/02 La Mer Technology, paragraph 32 above, paragraph 24).

47 Moreover, because an invoice was drawn up, the intervener shows that the trade mark is used publicly and externally and not solely within the undertaking which owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (see, to that effect, VITAFRUIT, paragraph 27 above, paragraph 50).

48 In this respect, it is clear from the list of sales and the invoice referred to above, which both contributed to the finding of genuine use of the trade mark that, during the relevant period, the intervener made a certain number of sales, listed in paragraph 37 above (Annex II). Even though some of those sales did not concern hollow fiber oxygenators with detachable hard-shell reservoir (which are referred to under the abbreviation SX), the fact remains that the intervener sold 4 of those products in 1998, 105 in 1999 and 12 in 2001, for a total amount of EUR 19 901.76.

49 It is true that, although such sales during the relevant period cannot be considered to be significant in terms of volume, the data must be viewed in relation to the nature of the goods, namely hollow fiber oxygenators with detachable hard-shell reservoir, which are extremely specialised products. According to the findings in the opposition decision, which were not contested by the intervener and which were expressly approved by the applicant in its application, -�an oxygenator is a device that mechanically oxygenates venous blood extra corporeally and is used in combination with one or more pumps for maintaining circulation during open heart surgery and for assisting the circulation in patients seriously ill with some cardiac and pulmonary disorders-�. That definition clearly shows that oxygenators are very specific products.

50 In addition, notwithstanding the regrettable lack of objective and tangible data concerning the structure of the relevant market, it is clear that, in the light, precisely, of the nature of the goods concerned, referred to in the previous paragraph, such a market cannot but be narrow.

51 Finally, the number of transactions involving the goods concerned during the relevant period does not appear to be a token amount and therefore does not permit the view to be taken that the intervener used the CAPIOX trade mark for the sole purpose of preserving the rights conferred by the trade mark. On the contrary, such use must be viewed as warranted, in the economic sector concerned and in the light of the nature of the goods concerned, in order to maintain or create a share in the market for the goods protected by the mark for the purposes of the case-law referred to in paragraphs 29 to 32 above.

52 In the third place, as regards the advertising brochures, they also serve to underline the fact that the earlier trade mark was put to genuine use.

53 As regards the complaint that those brochures should not have been taken into consideration on the ground that they were available only in English, French, German, Spanish and Cyrillic script, but not in Finnish, it cannot be concluded from the fact that no brochures were drawn up in Finnish that brochures in English were not distributed in Finland.

54 In this respect, it is necessary to recall that the goods concerned, namely hollow fiber oxygenators with detachable hard-shell reservoir, are highly technical and are therefore intended for professionals, namely doctors specialised in cardiovascular surgery or highly-qualified hospital personnel. It is common ground that in the medical field English plays a fundamental and preponderant role, and also that, particularly in Finland, knowledge of English is very widespread.

55 In addition, the fact that use of English is widespread in Finland is confirmed by invoice No 0021710939, of 29 October 2001, which, even though it is addressed to a company established in Finland, is drawn up exclusively in English, with no mention of Finish.

56 Those advertising brochures effectively permit a finding that the hollow fiber oxygenators with detachable hard-shell reservoir, a photograph of which appears on the said brochures, carry the CAPIOX trade mark.

57 It follows from all the foregoing that the Board of Appeal did not commit any error when, as paragraph 21 of the contested decision shows, it took into consideration, in referring to the promotional material, the brochures written in English for the purposes of establishing genuine use of the earlier trade mark.

58 As regards labels, it must also be held that two of them relate to hollow fiber oxygenators with detachable hard-shell reservoir and clearly bear the mark CAPIOX [CAPIOX® SX 18 (CX*SX18 and CX*SX18R)]. Those labels, on which appear the address of the seat of the manufacturer for Europe, the United States and Japan and, in the top right-hand corner, the EC mark, are in English. The observations made concerning the use of English in connection with advertising brochures must therefore apply equally to those labels.

59 Moreover, as regards the applicant-�s argument that the CAPIOX trade mark is not shown on the intervener-�s products, in any event, it is sufficient to point out that that is factually inaccurate, in so far as some of the products whose photographs appear on the brochures carry the trade mark, as the applicant did indeed acknowledge itself both in its application and at the hearing.

60 It follows from all the foregoing that the Board of Appeal was right to find that the intervener had furnished proof of genuine use of the earlier trade mark CAPIOX in Finland, so that the first plea must be dismissed.

The second plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94

61 The applicant submits that the question of the likelihood of confusion must be examined in the light of all the circumstances of the case (Case C-251/95 SABEL [1997] ECR 6191).

62 As regards, in the first place, the CAPIOX trade mark, the applicant points out, first, as regards the comparison of the goods concerned, that the Board of Appeal found that there was sufficient use of the trade mark for hollow fiber oxygenators with detachable hard-shell reservoir and compared them to apparatus for placing a suture. Even though the applicant agrees with the Board of Appeal-�s finding that the goods in issue had a different method of use, would not be in competition with each other and were not interchangeable, it contests the Board-�s assessment of the similarity of those goods, which was based on the fact that they are both used in the field of medicine. Nearly all goods of significance could be used in that field, so that that factor cannot establish similarity. In addition, the goods concerned either have nothing in common, or have a very low degree of similarity, since, as the Opposition Division found at pages 8 and 9 of its decision, oxygenators are used to supply fresh oxygen to the blood, whereas apparatus for placing a suture is used to hold together skin, organs, blood vessels and blood tissue. Reiterating the findings of the Opposition Division on it own account, the applicant states that the nature of the products is different, since oxygenators are fairly complex devices consisting of filters, pumps, water and blood reservoirs and gas exchange modules that mechanically oxygenate venous blood extra corporeally, whereas its apparatus for placing a suture is a device for making a stitch or a row of stitches holding together the edges of a wound or surgical incision. Also, their purpose is also different, since the function of the oxygenator is to supply fresh oxygen to the blood whereas the purpose of the apparatus for placing a suture is to hold skin, organs, blood vessels and tissues of the human body together, after they have been cut during minor or major surgery. In the absence of any evidence to the contrary provided by the intervener, it must be assumed that the goods also have different distribution channels. Finally, the origin of the goods cannot be the same, since their development and manufacture require distinct engineering, technical know-how and places of manufacture; oxygenators are thus most likely to be produced by companies specialised in surgical medical devices.

63 Second, the applicant submits, as regards comparison of the signs at issue, that they differ in that the intervener-�s trade mark includes the letter -�x-� at the end, which, as a letter, has a strong visual and phonetic character and affects not only the pronunciation of the sign, but also its overall impression which will remain in the memory of the average consumer. Account must also be taken of the fact that the relevant public is made up of professionals, who pay greater attention. Since the trade marks are short word marks, slight differences are sufficient to distinguish them from each other, and the additional letter at the end of the intervener-�s trade mark gives a different overall impression when compared visually and phonetically, particularly as use of the letter -�x-� is uncommon in Finnish.

64 As regards, in the second place, the trade mark CAPIOX PULSE, the applicant considers it useful to submit observations, even though the Board of Appeal did not examine whether there was a likelihood of confusion between that trade mark and the trade mark applied for. In this respect, the applicant notes that, since the intervener did not submit documents showing that the trade mark had an increased scope of protection, the scope of protection had to be considered to be solely of an average degree.

65 As regards comparison of the goods concerned, the applicant, having pointed out that the trade mark is essentially registered for oxygenators and other products, refers to its observations set out in paragraph 62 above. As regards comparison of the conflicting signs, the applicant submits that the earlier trade mark includes the additional letter -�x-� at the end of the sign and the word component -�pulse-�. Even though the presence of the letter -�x-� is enough to avoid confusion in specialist circles, the applicant notes that the earlier trade mark, by using the word -�pulse-�, creates a further difference between it and the applicant-�s own trade mark, because it has a distinctive character and is not descriptive.

66 In this respect, the applicant submits that OHIM has registered word marks for PULSE or containing that component for comparable products.

68 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-�.

69 Moreover, pursuant to Article 8(2)(a)(ii) of Regulation No 40/94, earlier trade marks must be understood to mean Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

70 According to consistent 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 (see LA MER, paragraph 26 above, paragraph 100, and the case-law cited; see, 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).

71 Further, it has been consistently held that the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see LA MER, paragraph 26 above, paragraph 101, and the case-law cited there; see, by analogy, SABEL, paragraph 61 above, paragraph 22; Canon, paragraph 70 above, paragraph 16; and Lloyd Schuhfabrik Meyer, paragraph 70 above, paragraph 18).

72 That global appreciation entails a certain interdependence between the factors taken into account, and in particular the similarity between the trade marks and between the goods or services covered. Accordingly, 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 C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333, paragraph 48; Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 25; see, by analogy, Canon, paragraph 70 above, paragraph 17). The interdependence of those factors is expressly referred to in the seventh recital in the preamble to Regulation No 40/94, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (see LA MER, paragraph 26 above, paragraph 102, and the case-law cited there).

73 Furthermore, the global appreciation of the visual, aural or conceptual similarity of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 40/94 - -�there exists a likelihood of confusion on the part of the public-� - shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see LA MER, paragraph 26 above, paragraph 103, and the case-law cited there; see, by analogy, SABEL, paragraph 61 above, paragraph 23).

74 In the present case, the trade mark on which the opposition is based is a national trade mark registered in Finland. The decision of the Opposition Decision was based on the Finnish trade mark and the Community trade mark. The contested decision was based solely on the earlier Finnish trade mark, something which the parties do not challenge. Therefore, the assessment must be limited to the territory of Finland.

75 As the Board of Appeal correctly found, in paragraph 18 of the contested decision, the relevant public is composed of Finnish professionals in the medical sector. That public must be considered to be well-informed, observant and circumspect (see, to that effect, Case T-311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II-2957, paragraph 28; see, by analogy, Lloyd Schuhfabrik Meyer, paragraph 70 above, paragraph 26).

76 The Board of Appeal-�s assessment of the likelihood of confusion between the conflicting signs must be reviewed in the light of the above considerations.

77 According to consistent case-law, in order to assess the similarity of the products or services concerned, all the relevant features of the relationship that might exist between those products or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Sunrider v OHIM, paragraph 27 above, paragraph 85; judgment of 15 March 2006 in Case T-31/04 Eurodrive Services and Distribution v OHIM - Gómez Frías (euroMASTER), paragraph 31).

78 As regards the assessment of the similarity of the goods at issue, the Board of Appeal found, in paragraphs 22 to 24 of the contested decision, that, owing to their functional differences, apparatus for placing a suture, on the one hand, and hollow fiber oxygenators with detachable hard-shell reservoir, on the other hand, have a different method of use, are not in competition with each other and are not interchangeable. However, the Board found, in essence, that the goods at issue were closely linked to the goods of the intervener in so far as they had a certain complementary character, since they could be used simultaneously in the field of medicine, for example during surgery. They might also be purchased through the same distribution channels and be found in the same points of sale, so that the relevant public could be led to believe that they came from the same undertaking.

80 In this respect, it must be noted that the goods bearing the earlier trade mark and those covered by the mark applied for both concern the medical field and are therefore intended to be used in the context of a therapeutic treatment.

81 In addition, as the Board of Appeal rightly pointed out, all the goods covered by the mark applied for have a certain complementary relationship with those bearing the earlier trade mark.

82 It is true that goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods lies with the same undertaking (see, to that effect, Case T-169/03 Sergio Rossi v OHIM - Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, paragraph 60, upheld on appeal in Case C-214/05 P Rossi v OHIM [2006] ECR I-7057; Case T-364/05 Saint-Gobain Pam v OHIM - Propamsa (PAM PLUVIAL) [2007] ECR II-757, paragraph 94; and Case T-443/05 El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR I-0000, paragraph 48).

83 It is also true that, as OHIM moreover acknowledged, apparatus for placing a suture cannot be considered to be indispensable or important for the use of hollow fiber oxygenators with detachable hard-shell reservoir.

84 However, it is clear that apparatus for placing a suture and hollow fiber oxygenators with detachable hard-shell reservoir can be considered to be complementary where, in surgery which has required an incision and during which an oxygenator has been used, the surgeon uses apparatus for placing a suture. Thus, in the course of a single, very specific procedure, namely a surgical operation, two apparatus, namely an oxygenator and apparatus for placing a suture, might be used, one bearing the trade mark CAPIOX and the other the trade mark CAPIO.

85 It follows that, even though the applicant claims that the goods at issue cannot be considered to be similar simply because they are both used in the field of medicine, which, according to the applicant, is the case of nearly all goods of significance, the goods at issue are similar because they are in fact in a certain complementary relationship and specifically target certain professionals in the medical sector. In addition, in the present case, contrary to what the applicant claims, the goods at issue are not similar solely because they are used in the field of medicine, but because they could be used in the same, very specific surgical operation, namely open-heart surgery.

86 Finally, the products at issue can in fact be found in the same distribution channels, such a criterion being relevant for the purposes of the assessment of the similarity of the goods (PiraÑAM diseño original Juan Bolaños, paragraph 82 above, paragraph 37; see also, to that effect, SISSI ROSSI, paragraph 82 above, paragraph 65; and PAM PLUVIAL, paragraph 82 above, paragraph 95).

87 Accordingly, given the close link between the products in question as regards their end users, the fact that they are to some extent complementary and the fact that they may be distributed via the same distribution channels, the Board of Appeal was right to find that the applicant-�s goods and those of the intervener were similar (see, to that effect, Case T-388/00 Institut für Lernsysteme v OHIM - Educational Services (ELS) [2002] ECR II-4301, paragraph 56).

88 As stated in paragraph 73 above, the global appreciation of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (Il Ponte Finanziaria v OHIM, paragraph 72 above, paragraph 33; Case T-292/01 Phillips-Van Heusen v OHIM - Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47; and Case T-256/04 Mundipharma v OHIM - Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 52; see, by analogy, SABEL, paragraph 61 above, paragraph 23).

89 It also follows from the case-law 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, that is, visually, aurally or conceptually (MATRATZEN, paragraph 72 above, paragraph 30, and Case T-363/04 Koipe v OHIM - Aceites del Sur (La Española) [2007] ECR I-000, paragraph 98; see, by analogy, SABEL, paragraph 61 above, paragraph 23).

90 The Board of Appeal found, in paragraph 26 of the contested decision, that, visually, the two trade marks shared the same five letters, namely CAPIO, arranged in the same order, the only difference being the letter -�x-� at the end of the earlier trade mark. It pointed out that, phonetically, the only difference was also the sound of the letter -�x-� at the end of the earlier trade mark and that, conceptually, neither of the trade marks seemed to have any apparent meaning. Even though the letter -�x-� is unusual in Finnish, the Board of Appeal, disagreeing with the Opposition Division, found that use of that letter was very common, even in Finnish, for trade marks used in the field of medicine and concluded from all those facts that the signs had a high degree of similarity.

91 In this respect, it must be recalled that the signs to be compared are CAPIOX and CAPIO.

92 As regards the visual comparison, the sign CAPIO is entirely contained in the earlier trade mark CAPIOX and can only be distinguished by the omission of the letter -�x-�. It follows that there is a high degree of similarity between the two signs.

93 As regards phonetic comparison of the signs, both have in common the word -�capio-�, the difference lying in the pronunciation of the letter -�x-� at the end of the earlier trade mark. Despite that difference, there is a certain similarity between the two signs.

94 As regards conceptual comparison, it is clear that neither of the two signs has any particular meaning and that both are an arbitrary construction.

95 The similarity between the signs at issue cannot be called into question on the ground that use of the letter -�x-� is not common in Finland. Even if it were the case, as the Opposition Division stated, that the letter -�x-� was seldom used in Finnish, that cannot have the effect of eliminating the similarity between the signs, because, as the Board of Appeal rightly pointed out in paragraph 27 of the contested decision, the medical field is highly internationalised and numerous trade marks that include the letter -�x-� coexist in it.

96 Consequently, the Board of Appeal was right to find that the conflicting signs had a high degree of similarity.

97 Finally, as regards the arguments put forward by the applicant to show that there is no similarity between the sign CAPIO and the earlier trade mark CAPIOX PULSE, it is clear from paragraph 18 of the contested decision that the Board of Appeal found it appropriate -�first [to] examine the contested mark and the earlier trade mark No 108926 which is registered and protected in Finland-� and that, in so far as it concluded that there was a likelihood of confusion between the two signs, it did not find it necessary to ascertain whether there was also a likelihood of confusion between the CAPIO sign and the trade mark CAPIOX PULSE.

98 Since it has been held that the Board of Appeal rightly found that the earlier trade mark CAPIOX and the Community trade mark applied for, CAPIO, were similar, the applicant-�s arguments alleging that the latter mark and the earlier trade mark CAPIOX PULSE are not similar is irrelevant (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM - González Cabello et Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraphs 70 to 72).

99 As has been held in paragraphs 77 to 87 above, the goods at issue and the goods covered by the earlier trade mark are similar. In addition, the overall impression produced by the conflicting signs is likely to render them sufficiently similar to lead to a likelihood of confusion in the minds of the relevant public.

100 Therefore, the Board of Appeal was right to find that there was a likelihood of confusion and to reject the application for registration of the CAPIO sign for the goods at issue.

101 In that respect, it must be pointed out that even though the goods at issue lack a high degree of similarity that is offset by the very high degree of similarity between the signs, particularly as the earlier trade mark is an invented word that does not allude, directly or indirectly, to the goods concerned. Since the trade mark CAPIOX is a made-up word, it therefore has a very distinctive character as OHIM rightly observed. It follows that the Board of Appeal was right to find, at paragraph 31 of the contested decision that, in this case, the low degree of similarity between the goods at issue is offset by the high degree of similarity between the signs at issue.

102 Moreover, given that feature, even a public made up of specialists with a high degree of attention might, when confronted with the goods at issue, either not notice the difference resulting from the absence of the letter -�x-� on goods bearing the trade mark applied for or think that the goods nevertheless originate from the same undertaking, which affixes a trade mark to some of its goods that is practically identical to the one it affixes to other of its goods. It is clear that the mere possibility mentioned above that the goods at issue could be used during the same, very specific surgical operation, namely open-heart surgery, shows that there is a genuine likelihood that a public, even one made up of professionals, could believe that the goods came from the same undertaking.

105 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 incurred, as applied for by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Boston Scientific v OHMI - Terumo (CAPIO) (Intellectual property) [2008] EUECJ T-325/06 (10 September 2008) URL: http://www.bailii.org/eu/cases/EUECJ/2008/T32506.html Cite as: [2008] ECR II-174, EU:T:2008:338, [2008] EUECJ T-325/6, ECLI:EU:T:2008:338, [2008] EUECJ T-325/06

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