Judgments nº T-222/09 of The General Court, February 09, 2011

• Resolution Date: February 09, 2011
• Issuing Organization: The General Court
• Decision Number: T-222/09

In Case T‑222/09,

Ineos Healthcare Ltd, established in Warrington, Cheshire (United Kingdom), represented by S. Malynicz, Barrister, and A. Smith, Solicitor,

applicant,

v

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

defendant,

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

Teva Pharmaceutical Industries Ltd, established in Jerusalem (Israel),

ACTION against the decision of the Second Board of Appeal of OHIM of 24 March 2009 (Case R 1897/2007-2), concerning opposition proceedings between Teva Pharmaceutical Industries Ltd and Ineos Healthcare Ltd,

THE GENERAL COURT (Fourth Chamber),

composed, at the time of the deliberation, of O. Czúcz, President, I. Labucka (Rapporteur) and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 1 June 2009,

having regard to the response lodged at the Court Registry on 2 October 2009,

having regard to the applicant’s letter of 14 May 2010 stating that it no longer wished to be heard at a hearing,

having regard to the Court’s written questions to the parties,

having regard to the observations lodged by the parties at the Court Registry on 11 and 14 June 2010,

gives the following

Judgment

Background to the dispute

1 On 3 March 2005, the applicant, Ineos Healthcare Ltd, filed an application for registration of a Community trade mark at 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)).

2 The trade mark in respect of which registration was applied for is the word sign ALPHAREN.

3 The goods for which registration was applied for, after the limitation made during the proceedings before OHIM, fall within 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 consist of the following: ‘Pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds; pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments; phosphate binders for use in the treatment of hyperphosphataemia’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 49/2005 of 5 December 2005.

5 On 6 March 2006, Teva Pharmaceutical Industries Ltd (‘the opposing party’) filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the following earlier marks:

– Hungarian word mark ALPHA D3 No 134 972 for ‘pharmaceutical preparation for regulating calcium’ in Class 5;

– Lithuanian word mark ALPHA D3 No 20 613 for ‘pharmaceutical preparation for calcium regulation’ in Class 5; and

– Latvian word mark ALPHA D3 registered as No M 30 407 for ‘a pharmaceutical preparation being a calcium regulator’ in Class 5.

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

8 On 9 October 2007, the Opposition Division upheld the opposition in its entirety on the basis of the earlier Hungarian trade mark.

9 On 29 November 2007, the applicant filed a notice of appeal at OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision.

10 By decision of 24 March 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. Specifically, it held that the earlier Hungarian mark could not be taken into consideration because there was no translation of the registration certificate into the language of the proceedings. The fact that the opposition was upheld on the basis of the earlier Hungarian mark alone would in itself justify the annulment of the decision of the Opposition Division. Nevertheless, by holding that a decision with the same operative part as that of the Opposition Division could be adopted at the time of the appeal ruling, the Board of Appeal, exercising its discretion, examined the other marks on which the opposition was based. In that regard, it pointed out, in particular, that the goods covered by the Latvian and Lithuanian registrations were identical to those covered by the earlier Hungarian trade mark and that the parties had had the opportunity to comment on all the facts of the case. It observed that the signs at issue show a certain degree of visual, phonetic and conceptual similarity. Similarly, it concluded that the goods were in part identical and in part similar. The Board of Appeal stated that that factor outweighed the lesser degree of similarity between the marks. It concluded, in essence, that there was a likelihood of confusion on the part of the average consumer, who is a member of the relevant public and, not having the same level of knowledge and ability in biochemistry and pharmacology as professionals in those fields, is more vulnerable to such confusion.

Procedure and forms of order applied for by the parties

11 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

12 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

13 In support of...