Judgments nº T-27/08 of Court of First Instance of the European Communities, September 23, 2009

• Resolution Date: September 23, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-27/08

In Cases T-493/07, T-26/08 and T-27/08,

GlaxoSmithKline SpA, established in Verona (Italy),

Laboratórios Wellcome de Portugal, L da , established in Algés (Portugal),

The Wellcome Foundation Ltd, established in Greenford, Middlesex (United Kingdom),

represented by R. Gilbey, lawyer,

applicants,

v

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

defendant,

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

Serono Genetics Institute SA, established in Évry (France),

THREE ACTIONS brought against the decisions of the First Board of Appeal of OHIM of 14 September 2007 (Case R 8/2007-1), of 20 November 2007 (Case R 10/2007-1) and of 19 November 2007 (Case R 9/2007-1), concerning cancellation proceedings between on the one hand, GlaxoSmithKline SpA, Laboratórios Wellcome de Portugal L da and The Wellcome Foundation Ltd and, on the other, Serono Genetics Institute SA,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber),

composed of N.J. Forwood, President, D. -váby (Rapporteur) and E. Moavero Milanesi, Judges,

Registrar: K. Poche-, Administrator,

having regard to the applications lodged at the Court Registry on 28 December 2007 (Case T-493/07) and 21 January 2008 (Cases T-26/08 and T-27/08),

having regard to the responses lodged at the Court Registry on 11 April 2008 (Case T-493/07) and 16 May 2008 (Cases T-26/08 and T-27/08),

having regard to the Order of the President of the Seventh Chamber of the Court of First Instance of 18 July 2008, joining the present cases for the purposes of the oral procedure, in accordance with Article 50 of the Rules of Procedure of the Court of First Instance,

further to the hearing on 21 January 2009,

gives the following

Judgment

Background to the dispute

1 On 30 November 2001, Serono Genetics Institute SA filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in accordance with 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)).

2 The mark for which registration was sought is the word sign FAMOXIN.

3 The goods for which registration was sought are in Class 5 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: -pharmaceutical preparations for the treatment of metabolic disorders adapted for administration only by intravenous, intra-muscular or subcutaneous injection-.

4 The trade mark applied for was registered on 31 May 2005.

5 On 30 September 2005, GlaxoSmithKline SpA, Laboratórios Wellcome De Portugal L da and The Wellcome Foundation Ltd filed three applications with OHIM for a declaration of invalidity of the Community trade mark FAMOXIN, on the basis of Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009).

6 GlaxoSmithKline relied on the earlier word mark LANOXIN, registered in Italy under No 758 074 for the following goods in Class 5: -pharmaceutical preparations-.

7 Laboratórios Wellcome de Portugal relied on the earlier work mark LANOXIN, registered in Portugal under No 157 610 for the following goods in Class 5: -pharmaceutical preparations with digoxin for human use-.

8 The Wellcome Foundation relied on the following earlier rights:

- the word mark LANOXIN under Finnish trade mark registration No 31 403 for the following goods in Class 5: -pharmaceutical preparations with digoxin for human use-;

- the word mark LANOXIN under Benelux trade mark registration No 63 853 for the following goods in Class 5: -medicinal and pharmaceutical products-;

- the word mark LANOXIN under Danish trade mark registration No VR 1989 05 795 for the following goods in Class 5: -pharmaceutical preparations with digoxin for human use-;

- the word mark LANOXIN under Irish trade mark registration No 59 069 for, inter alia, the following goods in Class 5: -medical, pharmaceutical substances-;

- the word mark LANOXIN under United Kingdom trade mark registration No 752 835 for the following goods in Class 5: -pharmaceutical preparations with digoxin for human use-;

- the word mark LANOXIN under Greek trade mark registration No 21 480, registered for the following goods in Class 5: -pharmaceutical and medical products-;

- the word mark LANOXIN under Swedish trade mark registration No 366 605 for the following goods in Class 5: -pharmaceutical and medical products-.

9 On 6 January 2006, Serono Genetics Institute requested proof of use of the earlier marks relied on by the applicants.

10 Following that request, on 12 April 2006, The Wellcome Foundation withdrew its reliance on the Greek registration No 21 480 and the Swedish registration No 366 605 in support of the application for cancellation.

11 By three decisions of 30 October 2006, the Cancellation Division rejected the applicants- applications for cancellation.

12 On 21 December 2006, the applicants filed appeals pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against those decisions of the Cancellation Division.

13 By decision of 14 September 2007 (Case R 8/2007-1), the First Board of Appeal dismissed the appeal lodged by GlaxoSmithKline and upheld the Cancellation Division-s decision, stating that the earlier mark, registered in Italy under No 758 074, should be deemed to be registered for -pharmaceutical preparations for cardiovascular illnesses-, that is to say, a sub-category covering the goods in respect of which the earlier mark had in fact been used.

14 By decision of 20 November 2007 (Case R 10/2007-1), the First Board of Appeal dismissed the appeal lodged by Laboratórios Wellcome de Portugal and upheld the Cancellation Division-s decision, stating that the earlier mark, registered in Portugal under No 157 610, should be deemed to be registered for -pharmaceutical preparations with digoxin for human use for cardiovascular illnesses-, that is to say, a sub-category covering the goods in respect of which the earlier mark had in fact been used.

15 By decision of 19 November 2007 (Case R 9/2007-1), the First Board of Appeal dismissed the appeal lodged by The Wellcome Foundation and upheld the Cancellation Division-s decision, stating that the earlier marks, registered in Finland under No 31 403, in the Benelux countries under No 63 853, in Denmark under No VR 1989 05 795, in Ireland under No 59 069 and in the United Kingdom under No 752 835, should be deemed to be registered for -pharmaceutical preparations for cardiovascular illnesses-, that is to say, a sub-category covering the goods in respect of which the earlier marks had in fact been used.

16 It is apparent from those three decisions that the Board of Appeal based its rejection of the applicants- appeals, essentially, on the same reasoning.

17 First, it took the view that the goods covered by the earlier marks LANOXIN could be in the form of tablets or liquid for oral use or of an injection for the treatment of cardiovascular illnesses, while the goods covered by the Community trade mark FAMOXIN were goods intended only for injection for the treatment of metabolic disorders.

18 Next, the Board of Appeal considered that goods intended to treat metabolic disorders by...