Farmeco v OHMI - Allergan (BOTUMAX) (Intellectual property) [2010] EUECJ T-131/09 (28 October 2010)

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(Community trade mark – Opposition proceedings – Application for the Community word mark BOTUMAX – Earlier Community word and figurative marks BOTOX – Relative grounds for refusal – Likelihood of confusion – Damage to reputation – Article 8(1)(b) and (5) of Regulation (EC) No 40/94 (now Article 8(1)(b) and (5) of Regulation (EC) No 207/2009))

Farmeco AE Dermokallyntika, established in Athens (Greece), represented by N. Lymperis, lawyer,

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

1 On 5 June 2003, the applicant, Farmeco AE Dermokallyntika, 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The goods in respect of which registration of the mark was sought are, following the restriction which took place in the course of the procedure before OHIM, in Classes 3, 5 and 16 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 The trade mark application was published in Community Trade Marks Bulletin No 25/2004 of 21 June 2004.

5 On 16 September 2004, Allergan Inc. (‘the opposing party’) filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

7 The abovementioned Community trade marks have been registered in respect of ‘pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain’ in Class 5.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 40/94 (now Article 8(1)(b), (4) and (5) of Regulation No 207/2009).

9 By decision of 26 October 2007, the Opposition Division of OHIM rejected the opposition.

10 On 20 December 2007, the opposing party filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.

11 By decision of 2 February 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM partially annulled the Opposition Division’s decision and rejected the application for registration in respect of all the goods mentioned in paragraph 3 above, except for the following goods in Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), plastic materials for packaging (not included in other classes), printers’ type, printing blocks’.

12 The Board of Appeal found that the marks which were closest to the mark applied for were the Community word mark BOTOX No 1 999 481 (‘the earlier word mark’) and the Community figurative mark No 2 015 832 (‘the earlier figurative mark’) mentioned in paragraph 6 above (collectively referred to as ‘the earlier marks’), and therefore confined the examination of the appeal to those two marks.

13 In essence, as regards the ground for refusal referred to in Article 8(1)(b) of Regulation No 40/94, the Board of Appeal found, first, that as far as the similarity of the signs is concerned, the marks at issue were visually and aurally similar to an average degree and that no conceptual comparison was, in principle, possible. Secondly, as regards the comparison of the goods, the Board of Appeal concluded that, given that the ‘pharmaceutical and sanitary preparations for medical purposes’ designated by the mark applied for included all the goods in Class 5 designated by the earlier marks (see paragraph 7 above), those goods were identical. Consequently, the Board of Appeal found that there was a likelihood of confusion in respect of those goods, which was even greater because the earlier marks had acquired a highly distinctive character in respect of pharmaceutical preparations for the treatment of wrinkles, but also in respect of the rest of the goods in Class 5 covered by those marks.

14 As regards the ground for refusal referred to in Article 8(5) of Regulation No 40/94, the Board of Appeal found that there was a risk that, in spite of the low degree of similarity or the dissimilarity between the other goods covered by the application for registration of the mark and those covered by the earlier marks, average consumers would make a link between the marks in dispute if they saw them on the applicant’s goods in Class 3 and Class 5, which are sold in pharmacies or supermarkets or simply have a similar purpose. It found that such a risk also existed in respect of the ‘printed matter, instructional and teaching material (except apparatus)’ in Class 16, as those goods cover publications such as magazines or scientific publications which may, inter alia, refer to the use of the goods designated by the earlier marks.

17 In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 8(1)(b) of Regulation No 40/94 and, secondly, infringement of Article 8(5) of that regulation.

18 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 40/94. First, the applicant states that, even though the ‘pharmaceutical preparations’ in Class 5 covered by the mark applied for include all of the goods in the same Class covered by the earlier marks, that is not true of the ‘sanitary preparations for medical purposes’. Those are neither identical nor similar to the goods covered by the earlier marks, as their nature and purpose are different. Secondly, given the high level of attentiveness on the part of the relevant public, the marks in dispute have no visual, aural or conceptual similarity. The applicant concludes, in the light of the limited distinctiveness of the earlier marks, that there is no likelihood of confusion as regards the ‘sanitary preparations for medical purposes’.

20 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 must 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.

21 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 from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

22 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

23 It is in the light of those considerations that the existence of a likelihood of confusion between the marks in dispute must be determined.

24 As regards the relevant territory, it should be pointed out – as the Board of Appeal did – that, as the earlier marks are Community trade marks, it is necessary to examine the perception of those marks in all the Member States of the European Union and that has not, moreover, been disputed by the applicant.

25 As regards the relevant public, the Board of Appeal was right to find, in paragraph 29 of the contested decision, that it is made up of professionals and end-consumers of cosmetics, pharmaceutical preparations and printed material relating to those goods whose level of attention will be relatively high, given the goods in question, and that has not, moreover, been disputed by the applicant.

26 According to settled case-law, in order to assess the similarity between the goods or services concerned, all the relevant factors relating to those goods 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. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the case-law cited).

27 In the present case, it should be pointed out, first, that, in examining the existence of a likelihood of confusion under Article 8(1)(b) of Regulation No 40/94, the Board of Appeal found that such a likelihood existed only in respect of the ‘pharmaceutical and sanitary preparations for medical purposes’ in Class 5 covered by the mark applied for. As regards the other goods in Class 5 and those in Class 3, the Board of Appeal’s rejection of the application for registration was not pursuant to Article 8(1)(b) of Regulation No 40/94, but pursuant to Article 8(5) of that regulation, which does not presuppose any similarity between the goods covered by the mark in dispute. Consequently, and as OHIM has rightly pointed out, there is no need to examine, in the context of this plea, the applicant’s arguments relating to the absence of similarity between, on the one hand, the ‘plasters, materials for dressings and disinfectants’ in Class 5 and the ‘cosmetics’ in Class 3 and, on the other hand, the goods covered by the earlier marks.

28 Secondly, as the Board of Appeal rightly pointed out in paragraph 16 of the contested decision, the ‘pharmaceutical and sanitary preparations for medical purposes’ designated by the mark applied for include all the goods in Class 5 covered by the earlier marks, namely the ‘pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain’. Accordingly, the goods designated by the earlier marks must be considered to be identical to those covered by the mark applied for (see, to that effect, judgment of 8 March 2005 in Case T-32/03 Leder & Schuh v OHIM – Schuhpark Fascies (JELLO SCHUHPARK), not published in the ECR, paragraph 49).

29 Even if the ‘sanitary preparations for medical purposes’ were not identical to the ‘pharmaceutical preparations’, that – as OHIM rightly points out – would have no effect in the present case in so far as they must, in any event, be regarded as being closely similar, in the light of the relatively high degree of similarity between those goods.

30 Those goods are intended for the same public and have the same intended purpose, as they are intended for use in medical treatment or in surgical operations. They also have the same nature, since they are perceived by consumers as goods belonging to the same general category of healthcare products. Furthermore, they are closely complementary in so far as sanitary preparations for medical purposes such as disinfectants may prove to be indispensable when pharmaceutical preparations for the treatment of wrinkles are administered. Lastly, they are sold in the same establishments, namely pharmacies.

31 It follows from the foregoing that the goods at issue must be considered to be identical or, at least, very similar.

32 The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited).

33 It has been held inter alia 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 of the visual, phonetic and conceptual aspects (see Case T-434/07 Volvo Trademark v OHIM – Grebenshikova (SOLVO) [2009] ECR II-0000, paragraph 31 and the case-law cited).

34 Furthermore, it should be borne in mind that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see Case T-359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II-1515, paragraph 43 and the case-law cited).

35 As regards, first, the visual comparison of the word marks at issue, it should be pointed out that it is true that they contain a different number of letters: five in the case of the earlier word mark and seven in the case of the mark applied for. However, four of the five letters in the earlier word mark are in the mark applied for. Consequently, the first three letters of the marks in dispute – in this case ‘b’, ‘o’ and ‘t’ – are identical and are in the same order. In that regard, it is important to bear in mind that the consumer generally pays greater attention to the beginning of a mark than to the end (Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY PROP) [2006] ECR II-2737, paragraph 51 and the case-law cited). Furthermore, the letter ‘x’ constitutes the last letter of both marks in dispute. Even though, as the applicant submits, the letters common to those marks are not all juxtaposed, the fact remains that both the beginning and the end of those marks are identical.

36 As regards the applicant’s argument that the mark applied for contains, by contrast with the word ‘botox’, three additional letters (‘u’, ‘m’ and ‘a’) in the middle part of the mark and in place of the second ‘o’, it should be pointed out that the presence of those letters – albeit not negligible visually – is not sufficient for a finding that there is a complete absence of visual similarity between the signs in question. In that regard, it should be pointed out that, although the middle part of the mark applied for is different, the consumer will not break down the marks on the basis of the letters which differ between them and which are not descriptive of a product or service, but will carry out a global assessment of the sign in accordance with the case-law cited in paragraph 32 above. The consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see Case T-186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II-1887, paragraph 38 and the case-law cited). It must therefore be held that the mark applied for has some visual similarity with the earlier word mark.

37 As regards the comparison of the earlier figurative mark and the mark applied for, it should be pointed out that the earlier figurative mark consists of the word ‘botox’ in bold, italicised capital letters preceded by an inverted apostrophe at the level of the letter ‘b’. In that regard, it must be stated, as the Board of Appeal correctly pointed out, that the figurative elements of the earlier figurative mark are limited to a common typeface and are insignificant compared with the dominant element which is the word ‘botox’. Accordingly, assessing the marks as a whole, the figurative elements of the earlier mark are negligible, while the word ‘botox’ constitutes the dominant element of that mark. Consequently, the assessment resulting from the visual comparison of the earlier word mark with the mark applied for is also applicable to the earlier figurative mark.

38 As regards, secondly, the aural comparison, it is true, as the applicant submits, that the marks in dispute have differences in length, rhythm and number of syllables, given that the earlier marks comprise two syllables (‘bo’ and ‘tox’) whereas the mark applied for has three syllables (‘bo’, ‘tu’ and ‘max’). However, first of all, the first syllable of the marks in dispute is identical. Secondly, it should be noted that the marks in dispute produce the same final sound on account of the letter ‘x’ at the end of both of them.

39 As for the extra syllable in the mark applied for, that is not sufficient to rule out the existence of an aural similarity between the marks in dispute. The element ‘uma’ in the mark applied for will not be perceived as self-standing by the relevant public, since that public will associate the last two letters ‘ma’ with the last letter ‘x’ of the mark applied for and will therefore recognise the abbreviation ‘max’ at the end of that mark. Furthermore, the fact that the mark applied for shares with the earlier marks the last letter ‘x’, which is a strong consonant, establishes a connection between the marks in dispute and offsets any difference arising from the presence of the element ‘uma’. In the light of those considerations, the applicant’s argument based on the presence of an additional syllable in the mark applied for does not dispel the similarity between the signs, which must be assessed on the basis of the overall impression produced by their full pronunciation (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia, Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 85). Furthermore, the fact that the number of syllables is different is not sufficient to rule out a similarity between the marks (see, to that effect, judgment of 17 April 2008 in Case C-108/07 P Ferrero Deutschland v OHIM and Cornu, not published in the ECR, paragraph 48). Consequently, the marks in dispute must be considered to be similar aurally.

40 As regards, thirdly, the conceptual comparison, it should be pointed out that the applicant’s argument that the Board of Appeal took the view that the suffix ‘tox’, which refers to a toxic substance, constitutes the dominant element of the earlier marks cannot succeed.

41 In that regard, it should be borne in mind that, in paragraph 23 of the contested decision, it was clearly pointed out by the Board of Appeal that the marks in dispute have no meaning in any of the languages of the European Union; that ‘they are fanciful words and any assumptions about their allusiveness may only be hypothetical’; and that, consequently, a conceptual comparison of them is impossible. Those findings must be concurred with and are sufficient to preclude any possibility of a conceptual comparison between the marks in dispute.

42 Furthermore, those findings are not called into question by the fact that the Board of Appeal also stated, in the same paragraph of the contested decision, that ‘if one has to look for any conceptual message in the earlier mark it should be on the basis of the suffix “tox” and the mark might be perceived by the English-speaking consumer as a designation for something which is “toxic”’. It is apparent from the wording used in the contested decision that the possibility that the earlier marks might have a meaning was raised only for the sake of completeness. The Board of Appeal had previously ruled out any possibility that the earlier marks might have any meaning whatsoever.

43 Furthermore, it should be pointed out that, contrary to the assertions made by the applicant, the Board of Appeal in no way found that the element ‘tox’ dominates the earlier marks.

44 Lastly, as regards the element ‘max’ in the mark applied for, it could be interpreted, as the Board of Appeal pointed out in paragraph 23 of the contested decision, as having a laudatory connotation in so far as it refers to the word ‘maximum’, therefore to a maximum level of performance and efficiency (judgment of 15 October 2008 in Joined Cases T-305/06 to T-307/06 Air Products and Chemicals v OHIM – Messer Group (Ferromix, Inomix and Alumix), not published in the ECR, paragraph 49). Furthermore, and as was pointed out by the Board of Appeal, the word ‘botox’ will not be perceived as a reference to the substance ‘botulinum’ as the most likely abbreviation for that word would be ‘botu’ and not ‘boto’.

45 The applicant’s argument that the element ‘bot’ is a common prefix of other Community trade marks registered in respect of goods in Classes 3 and 5 cannot succeed either. The registrability of a sign as a Community trade mark must be assessed solely on the basis of the relevant Community legislation, as interpreted by the Community judicature, and not on the basis of an approach taken in the past by the Boards of Appeal of OHIM in their decisions (Joined Cases T-146/02 to T-153/02 Deutsche SiSi-Werke v OHIM (Stand-up pouch) [2004] ECR II-447, paragraph 55, confirmed by the judgment in Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 48).

46 It follows from the above considerations that the Board of Appeal was right to find, in the light of the visual and aural similarities pointed out between the marks in dispute and following an overall assessment, that the marks in dispute are similar to an average degree.

47 It should be noted at the outset that it is apparent from the case-law that, in order to fulfil the condition relating to reputation, an earlier mark must be known by a significant part of the public concerned by the products or services covered by that trade mark. In examining whether that condition is fulfilled, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use and the size of the investment made by the undertaking in promoting it and it is not required for that mark to be known by a given percentage of the public so defined or for it to have a reputation throughout the relevant territory as long as it has a reputation in a substantial part of it (see, by analogy, as regards Article 5(2) of 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), Case C-375/97 General Motors [1999] ECR I-5421, paragraphs 24, 25 and 27 to 29, and, as regards Article 8(5) of Regulation No 40/94, Case T-8/03 El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) [2004] ECR II-4297, paragraph 67, and judgment of 19 June 2008 in Case T-93/06 Mülhens v OHIM – Spa Monopole (MINERAL SPA), not published in the ECR, paragraph 33).

48 In the present case, the Board of Appeal stated, in paragraph 30 of the contested decision, that the opposing party had submitted a large number of publications proving that the mark is widely known by the relevant public, both professionals and end-consumers. Furthermore, it found that, in view of the registrations for the earlier marks, which have been valid since 1991 and cover goods in Class 5 in numerous countries in the world, and of the development of the mark by means of large financial investments in promotional activities and indirect advertising and, lastly, in view of the ‘impressive’ sales and millions of users of the goods covered by them, the earlier marks were widely known and had obtained ‘enormous recognition’ in the market as a preparation for beauty treatments and the removal of stains or wrinkles, both as at the filing date of the application for registration of the trade mark applied for and the date of the contested decision. According to the Board of Appeal, because of that recognition, the earlier marks had acquired a highly distinctive character in respect of pharmaceuticals for the treatment of wrinkles and the rest of the goods in Class 5 covered by those marks.

49 Furthermore, the Board of Appeal stated, in paragraph 33 of the contested decision, that the earlier marks were widely known and had a reputation in all the Member States, not solely because of marketing efforts, but also, and especially, because of the indirect advertising of the product in the media, that is to say, through press articles which have familiarised the general public with the earlier marks as an effective product for removing facial wrinkles. The Board of Appeal concluded that a large section of the population had heard of the earlier marks as the result of intense media campaigns launched at the start of the present decade and widespread coverage, in the tabloid press, of the mark BOTOX as a beauty treatment.

50 The applicant disputes the evidential value of certain information which was taken into consideration by the Board of Appeal in assessing reputation. It submits, first, that, contrary to the opposing party’s claims, no proof of actual use of the earlier marks within the European Union since 1992 has been provided and that the fact that a trademark has been filed or registered in several countries, which is illustrated in particular by an extract from a private database, is insufficient in itself to demonstrate that the earlier marks have a reputation.

51 It is clear, however, from the file relating to the opposition proceedings, which was produced in accordance with Article 133(3) of the Rules of Procedure of the General Court, that, at the time when the application for the trade mark was filed, the opposing party was the proprietor of a number of national registrations of the mark – in Austria, the Benelux countries, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden and the United Kingdom – which have been attested by certificates of registration or renewal issued by the competent national authorities, on dates which precede that on which the application for the trade mark was filed. More specifically, it is apparent from those certificates that most of the national trade marks have been registered since 1991 and that their period of validity has been renewed, where appropriate, at the request of their proprietor.

52 That renders ineffective the applicant’s argument that the extract from the private database provided by the opposing party should not have been taken into consideration, in so far as the abovementioned certificates of registration show that there are earlier national rights for the purposes of Article 8(5) of Regulation No 40/94.

53 Although it is true that registration of the mark in a number of countries does not constitute a sufficient condition for considering that that mark has been subject to actual use, it must be stated that the Board of Appeal did not rely exclusively on the certificates of registration provided by the opposing party to conclude that the earlier marks had been subject to widespread use, but above all on the efforts to develop those marks, including the promotion and indirect advertising of the marks in the press.

54 Secondly, as regards the press articles put forward by the opposing party, the applicant states that they do not demonstrate a long-lasting, intensive and widespread presence of the earlier marks in the press and do not show the degree of awareness that the consumer has of those marks. Furthermore, the foreign press articles were not translated into the language of the case before OHIM.

55 The articles which appeared between 2001 and 2003 in daily and weekly newspapers aimed at the general public, or in 1999 in scientific or medical journals, show that the earlier marks have secured a high degree of recognition and given rise to specific interest, both from specialists in the health sector and the general-interest press. Contrary to the assertions made by the applicant, the articles which appeared in the abovementioned daily or weekly newspapers show a long-lasting and widespread presence of the earlier marks in the English-speaking press, which is widely distributed in the territory of the European Union. Furthermore, the publications in specialised journals show that the goods covered by those marks were used by practitioners and that it was possible for their therapeutic or aesthetic effects to be the subject of studies and assessments.

56 That indirect advertising of the mark which results from its presence in the press, irrespective of the promotional efforts which the opposing party has undertaken or financed for the direct advertising of the mark, is a strong indication that that mark had acquired an indisputable reputation at the time of those publications.

57 Consequently, those articles show the knowledge of the earlier marks acquired by a significant section of the public. The possibility that press articles which were not translated into the language of the case might not be admissible does not call that finding into question, in so far as the number of articles produced in the language of the case is sufficient to conclude that the marks were known to a large section of the English-speaking public of the European Union. In any event, the untranslated articles are examples of promotional activities and the presence of the trade mark in the foreign press and include photographs, and sometimes even headings in English, which show the success of the earlier marks in other countries of the European Union. Those articles demonstrate the geographical extent of the trade mark’s reputation and its reputation with the German-speaking, Dutch-speaking, Italian-speaking and Portuguese-speaking publics.

58 It is clear from those factors that the reputation of the earlier national and Community trade marks was established at the time when the application for the trade mark was filed – namely, on 5 June 2003 – both in the United Kingdom, where the renown of the trade marks and their success are apparent, and in a significant part of the territory of the European Union.

59 That finding is not called into question by the applicant’s argument that the turnover figures for sales and the amount spent on promoting the goods covered by the earlier marks, which are referred to in the opposing party’s observations of 5 September 2005, have not been proved. It should be pointed out that the absence of figures is not, in itself, capable of calling into question the finding as to reputation. First, the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serve as examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence produced by the opposing party is already sufficient in itself to prove the reputation of its mark for the purposes of Article 8(5) of Regulation No 40/94 (see, to that effect, judgment of 10 May 2007 in Case T-47/06 Antartica v OHIM – Nasdaq Stock Market (nasdaq), not published in the ECR, paragraph 52).

60 Furthermore, in so far as the reputation of the earlier marks has been proved satisfactorily, there is no need to examine the applicant’s arguments concerning the admissibility of the testimony of Mr S., the opposing party’s vice-president, which was submitted by the opposing party on 14 July 2006, in order to corroborate the amounts mentioned in its observations of 5 September 2007. In any event, it is not clear from the contested decision that that testimony was actually taken into account by the Board of Appeal.

61 Since the reputation of the earlier marks has been established, there is moreover no need to examine the applicant’s arguments relating to the admissibility of the decision of the United Kingdom Intellectual Property Office of 26 April 2005 concerning an application for a declaration of invalidity submitted by the opposing party against the mark BOTOMASK, or the applicant’s arguments relating to the breakdown of the figures for sales and investments in promoting the marks within the European Union.

62 It follows from the above that the Board of Appeal was right to find that the earlier marks have a reputation in respect of pharmaceutical preparations intended for the treatment of wrinkles. In that regard, it must be stated that, even if the reputation of the earlier marks were limited to the United Kingdom, that would not be sufficient to discount it because it suffices for the registration of a Community trade mark to be refused for a relative ground for refusal to be found to exist in one single Member State (see, by analogy, Case T-172/05 Armacell v OHIM – nmc (ARMAFOAM) [2006] ECR II-4061, paragraph 33 and the case-law cited).

63 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services concerned. 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-39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame) [2006] ECR II-5409, paragraph 74).

64 For the purposes of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see, by analogy, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26, and, to that effect, Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42).

65 In the present case, as has been pointed out above, in respect of the pharmaceutical and sanitary preparations for medical purposes, the level of attention will be relatively high as the consumers are primarily professionals from the medical sector and end-consumers of cosmetics.

66 Since the goods concerned are identical or, at least, very similar to the ‘pharmaceutical and sanitary preparations for medical purposes’ in Class 5, and in view of the average degree of similarity between the marks at issue, as well as the reputation of the earlier marks, it is clear that the Board of Appeal was fully entitled to find, in the contested decision, that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

67 The more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either inherently or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether there exists a likelihood of confusion (see Ferrero Deutschland v OHIM and Cornu, paragraph 39 above, paragraphs 32 and 33 and the case-law cited).

68 Lastly, the applicant’s reference to the decision of the First Board of Appeal of 28 May 2008 (Case R 863/2007-1) and to the decisions of 5 June 2008 (Cases R 865/2007-1 and R 864/2007-1) is irrelevant in terms of the case-law cited in paragraph 45 above.

69 It follows that the plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected.

70 The applicant submits, in essence, that the Board of Appeal infringed Article 8(5) of Regulation No 40/94. It considers, first, that, as the marks in dispute are not similar, no link can be established between them; secondly, that the reputation of the earlier marks was not sufficiently proved in respect of a significant part of the European Union during the relevant period; and, thirdly, that the existence of a risk that the mark applied for could take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks has not been sufficiently established.

72 Article 8(5) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for must not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

73 For an earlier mark to be afforded the broader protection under Article 8(5) of Regulation No 40/94, a number of conditions must therefore be satisfied: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II-711, paragraphs 34 and 35, and Case T-150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II-2353, paragraphs 54 and 55).

74 According to settled case-law, the protection provided by Article 8(5) of Regulation No 40/94 is not conditional on the finding of such a degree of similarity between the marks in question that there is a likelihood of confusion between them on the part of the relevant public. It suffices that the degree of similarity between those marks causes the relevant public to establish a link between them (see, to that effect, Case T-137/05 La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC), not published in the ECR, paragraph 34 and the case-law cited).

75 The existence of that link must, like a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, be assessed globally, account being taken of all factors relevant to the circumstances of the case (see VIPS, paragraph 73 above, paragraph 47 and the case-law cited).

76 According to the case-law of the Court of Justice relating to the interpretation of Article 4(4)(a) of First Directive 89/104, the content of which is, in essence, identical to that of Article 8(5) of Regulation No 40/94, the following may be cited as relevant factors in assessing whether the abovementioned link exists: the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (Case C-252/07 Intel Corporation [2008] ECR I-8823, paragraph 42).

77 As regards the degree of similarity between the marks at issue, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. That is particularly the case where those marks are identical. However, the fact that the marks at issue are identical, and even more so if they are merely similar, is not sufficient for it to be concluded that there is a link between those marks. It is possible that the marks at issue are registered for goods or services in respect of which the relevant sections of the public do not overlap (Intel Corporation, paragraph 76 above, paragraphs 44 to 46).

78 It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks (Intel Corporation, paragraph 76 above, paragraph 48).

79 It is also possible that, notwithstanding the fact that the public is identical or overlaps to some extent, the goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Accordingly, the nature of the goods or services for which the marks at issue are registered must be taken into consideration for the purposes of assessing whether there is a link between those marks. It is possible that the reputation of the earlier mark is so important that it produces effects beyond the relevant public as regards the goods or services registered. For the purposes of assessing where there is a link between the marks at issue, it may therefore be necessary to take into account the strength of the earlier mark’s reputation (Intel Corporation, paragraph 76 above, paragraphs 49 to 53).

80 Likewise, the stronger the distinctive character of the earlier mark, the more likely it is that the public, confronted with a later identical or similar mark, will establish a link between the two marks. Accordingly, the degree of distinctive character acquired by the earlier mark must also be taken into consideration for the purposes of ascertaining whether a link may be established between the marks (Intel Corporation, paragraph 76 above, paragraphs 54 to 57).

81 It is in the light of those principles that the lawfulness of the contested decision must be examined.

82 In the present case, it is apparent from the examination carried out in the context of the first plea, first, that the signs are similar to an average degree (paragraphs 46 and 66 above) and, secondly, that the reputation of the earlier marks has been proved satisfactorily in respect of the pharmaceutical preparations intended for the treatment of wrinkles in Class 5 (paragraphs 57 to 62 above).

83 The link which may be established by consumers between the marks at issue exists, according to the Board of Appeal, in respect of all the goods in Classes 3 and 5 as well as some goods in Class 16, namely ‘printed matter; instructional and teaching material (except apparatus)’, in so far as they cover publications which may refer to the use of goods covered by the mark BOTOX.

84 As regards the goods covered by the mark applied for, such as plasters, materials for dressings or disinfectants in Class 5, cosmetics, essential oils, soaps, perfumery, hair lotions and dentifrices in Class 3 and, lastly, instructional and teaching material (except apparatus) in Class 16, it should be noted that they have the same purpose as the goods covered by the earlier mark, namely for personal grooming or to improve a person’s appearance, beautify his skin or make him smell more attractive, provide him with specific treatment or inform him about therapies or the prevention of ageing of the skin.

85 As regards the nature of the goods referred to in the preceding paragraph, including the degree of closeness or dissimilarity, it is established, as OHIM has correctly pointed out, that there is a closeness between pharmaceutical preparations for the treatment of wrinkles and (i) cosmetics, as a result of the fact that they call to mind anti-aging products; (ii) ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’, which have a beautifying effect on the skin, hair or teeth; and (iii) ‘dietetic substances adapted for medical use’, which are supposed to improve a person’s appearance through weight loss.

86 There is a lesser degree of closeness as regards the other goods in respect of which registration of the mark BOTUMAX was applied for, namely: ‘bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations’ in Class 3; ‘food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, none of the above being intended for animal use or the treatment of infections or diseases of the human otorhinolaryngial system (ear, nose and throat)’ in Class 5; and, lastly, ‘printed matter, instructional and teaching material (except apparatus)’ in Class 16. However, as the Board of Appeal correctly pointed out in paragraph 44 of the contested decision, there is a risk that, notwithstanding the low level of similarity or the dissimilarity with the goods covered by the earlier marks, average consumers will make a link between the marks in dispute if they see them on the goods in Classes 3 and 5, which are sold in pharmacies or supermarkets, or which merely have a similar purpose. Consequently, and account being taken of the strength of the earlier marks’ reputation as found in paragraph 58 above, it is indisputable that a link might be made between the marks in dispute, in the mind of the public concerned by the goods covered by the mark applied for, notwithstanding the lesser degree of similarity with the goods covered by the earlier marks.

87 As the first two conditions specified in Article 8(5) of Regulation No 40/94 are therefore satisfied (see paragraph 73 above), it is necessary to consider the third condition set out in that provision, relating to a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks. In view of the wording of that provision, the existence of a single risk is sufficient for it to apply (see, to that effect, VIPS, paragraph 73 above, paragraph 36).

88 Article 8(5) of Regulation No 40/94 concerns three separate types of risk, including (i) the risk that the use without due cause of the trade mark applied for would be detrimental to the distinctive character of the earlier trade mark and (ii) the risk that the use without due cause of the trade mark applied for would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

89 The first type of risk arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the ‘dilution’ of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk referred to encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, the risk here is that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (VIPS, paragraph 73 above, paragraphs 37 and 40).

90 In order to define better the risk referred to in Article 8(5) of Regulation No 40/94, it should be pointed out that the primary function of a mark is unquestionably that of an ‘indication of origin’ (see the seventh recital in the preamble to Regulation No 40/94). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure, youth. To that effect, the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a signficant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor (VIPS, paragraph 73 above, paragraph 35).

91 Furthermore, it should be noted that the purpose of Article 8(5) of Regulation No 40/94 is not to prevent registration of any mark which is identical with a mark with a reputation or similar to it. The objective of that provision is, notably, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark, or to take unfair advantage of that repute or distinctive character. In that connection, it should be borne in mind that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark, but he must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (Case T-67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II-1825, paragraph 40). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see Case T-181/05 Citigroup and Citibank v OHIM – Citi (CITI) [2008] ECR II-669, paragraph 78 and the case-law cited).

92 In the present case, as regards, first, the risk that the use without due cause of the trade mark applied for would take unfair advantage of the distinctive character of the earlier trade mark, it should be pointed out that the Board of Appeal was right to find, in paragraph 42 of the contested decision, that the success and effectiveness of the goods covered by the earlier marks may result in the consumer’s buying the goods covered by the mark applied for. In view of the similarity of the marks in dispute and the link which the consumer will make between them, he may be led to think that the goods covered by the mark applied for are as effective as those covered by the earlier marks or, as a result of the element ‘max’ in the mark applied for, that their effectiveness is maximised.

93 As the Board of Appeal pointed out in paragraph 44 of the contested decision, that risk exists both in respect of the pharmaceutical preparations in Class 5 and the cosmetics included in Class 3, which, notwithstanding the different methods by which they are administered, have the same purpose, namely to improve the appearance of consumers.

94 Furthermore, the image conveyed by the earlier marks, which refers to a skin made smooth through the elimination of wrinkles, may benefit the bleaching and polishing preparations in Class 3, which are covered by the mark applied for. As the Board of Appeal pointed out in paragraph 42 of the contested decision, the consumer faced with those goods may think that they clean a surface or the laundry as if wrinkles were removed.

95 As for the ‘printed matter’ and ‘instructional and teaching material (except apparatus)’ in Class 16, the Board of Appeal was right to point out that they encompass magazines and specialised medical or scientific journals and that consumers – both professionals and end-consumers – would be led to buy goods of that type designated by the mark applied for, thinking that they will find in them the clues or advice of specialists proposing, inter alia, courses of action against the ageing of the skin.

96 It follows that the Board of Appeal was right to find that there is a risk that the use of the trade mark applied for would take unfair advantage of the distinctive character or repute of the earlier trade mark.

97 As regards, second, the risk that the use without due cause of the trade mark applied for would be detrimental to the distinctive character of the earlier trade marks, the Board of Appeal found that, in view of the fact that many competitors have attempted to register similar signs for identical or similar goods, the existence of another mark that appears to be a derivative of the widely known earlier marks will dilute its distinctive character.

98 Those assessments must be confirmed. It is true that the risk of dilution is lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used (see, to that effect, SPA-FINDERS, paragraph 91 above, paragraph 44, and VIPS, paragraph 73 above, paragraph 38).

99 However, in the present case, the word element ‘botox’ has no inherent meaning, but is a fanciful term with which the public will be faced only in relation to the goods covered by the widely known earlier trade mark. Consequently, the use of that word element or a similar word element by another trade mark registered for goods which may concern the general public will unquestionably result in the dilution of the distinctive character of the widely known earlier trade mark.

100 That is the position with regard, first, to the cosmetics and pharmaceutical preparations in Classes 3 and 5 and, secondly, to the goods in Class 16 covered by the earlier marks, which include magazines or journals, the distribution of which may be widespread. The risk that the use of an identical or similar trade mark would be detrimental to the distinctive character of a widely known earlier trade mark is greater where that other mark will be used in respect of goods intended for a wide public (see, a contrario, VIPS, paragraph 73 above, paragraph 63).

101 Consequently, the Board of Appeal was fully entitled to find that the use of the mark applied for is likely to be detrimental to the distinctive character of the widely known earlier trade mark.

102 As all the conditions required by Article 8(5) of Regulation No 40/94 are satisfied, the present plea must be rejected.

103 As none of the pleas relied on by the applicant is well founded, the action must be dismissed in its entirety, without there being any need to give a ruling on the request, set out in the applicant’s second head of claim, for alteration of the contested decision.

104 Under Article 87(2) of the Rules of Procedure of the General Court, 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, in accordance with the form of order sought by OHIM.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Farmeco v OHMI - Allergan (BOTUMAX) (Intellectual property) [2010] EUECJ T-131/09 (28 October 2010) URL: http://www.bailii.org/eu/cases/EUECJ/2010/T13109.html Cite as: [2010] EUECJ T-131/9, [2010] EUECJ T-131/09

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