Judgments nº T-256/04 of Court of First Instance of the European Communities, February 13, 2007

• Resolution Date: February 13, 2007
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-256/04

In Case T-256/04,

Mundipharma AG, established in Basle (Switzerland), represented by F. Nielsen, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by B. M¸ller, and subsequently by G. Schneider, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Altana Pharma AG, established in Konstanz (Germany), represented by H. Becker, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 April 2004 (Case R†1004/2002-2) relating to opposition proceedings between Mundipharma AG and Altana Pharma AG,

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

composed of J. Pirrung, President, A.W.H. Meij and I. Pelik·nov·, Judges,

Registrar: K. Andov·, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 28 June 2004,

having regard to the response of OHIM lodged at the Registry of the Court on 22 November 2004,

having regard to the response of the intervener lodged at the Registry of the Court on 22 November 2004,

further to the hearing on 24 January 2006,

gives the following

Judgment

†Background to the case

1††††††††On 7 October 1998, the intervener applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration of the word mark RESPICUR (-the mark applied for-) as a Community trade mark 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 goods in respect of 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: -[t]herapeutic preparations for respiratory illnesses-.

3††††††††That request was published in Community Trade Marks Bulletin No†45/1999 of 7 June 1999.

4††††††††On 1 September 1999, the applicant, relying on Article 8(1)(b) of Regulation No 40/94, brought opposition proceedings against the registration application. The opposition was founded on German word mark No†1155003 RESPICORT, lodged on 21 August 1989 and registered on 1 March 1990 for goods in Class 5 of the Nice Agreement, corresponding to the following description: -pharmaceutical and sanitary preparations; plasters- (-the earlier mark-).

5††††††††By decision of 30 October 2002, the Opposition Division rejected the opposition. It found that the applicant had not furnished proof of its ownership of the earlier mark or of its use. It also found that there was no likelihood of confusion between the mark applied for and the earlier mark.

6††††††††On 12 December 2002, the applicant brought an action against the decision of the Opposition Division.

7††††††††By decision of 19 April 2004 (-the contested decision-), the Second Board of Appeal set aside the decision of the Opposition Division on grounds of infringement of essential procedural requirements, but nevertheless dismissed the opposition in its entirety.

8††††††††In the contested decision, the Board of Appeal found that the Opposition Division should not have dismissed the opposition on grounds of lack of proof of ownership of the earlier mark. It went on to hold that the applicant had not succeeded in proving use of the earlier mark, to the extent necessary, and that account should be taken only of the use for -multi-dose dry powder inhalers containing corticoids, available only on prescription-, which had not been contested by the intervener. As to the issue of whether there was a likelihood of confusion, the Board of Appeal found that the goods in question were identical and that there was a certain similarity, offset however by marked differences between the two opposing signs. It found that the relevant public groups in respect of the earlier mark and the mark applied for overlapped only in the professional sector, which was thus the relevant public in the present case. In the light of the differences found, the Board of Appeal found that there was no likelihood of confusion between the mark applied for and the earlier mark.

†Procedure and forms of order sought

9††††††††On 10 November 2005, the Court requested the parties to reply to certain questions. The parties replied to the questions put by the Court within the prescribed periods.

10††††††The applicant claims that the Court should:

-††††††††annul the contested decision;

-††††††††order OHIM to pay the costs.

11††††††OHIM contends that the Court should:

-††††††††dismiss the action;

-††††††††order the applicant to pay the costs.

12††††††The intervener endorses the forms of order sought by OHIM.

†Admissibility

13††††††In their submissions, both the applicant and the intervener refer explicitly to the written pleadings lodged by them in the opposition proceedings before OHIM. The intervener has also referred to the grounds contained in the decisions of the Opposition Division and the Board of Appeal.

14††††††The Court observes that, under Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rule of Procedure of the Court of First Instance, the application initiating the proceedings must contain a summary of the pleas in law relied on. According to the case-law, the summary of the pleas relied on must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. The Court has further held that, while the body of the application may be supported and supplemented by references to certain passages in extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in the application, and it is not for the Court to place itself in the parties- position and seek the relevant information in the annexes (see order in Case T-56/92 Koelman v Commission [1993] ECR†II-1267, paragraphs 21 and 23, and judgment in Case T-231/99 Joynson v Commission [2002] ECR†II-2085, paragraph 154, and case-law cited). That case-law can also be transposed to the response of the other party to opposition proceedings before a Board of Appeal who intervenes before the Court of First Instance, pursuant to Article 46 of the Rules of Procedure, which, by virtue of the second subparagraph of Article 135(1) thereof, applies in matters of intellectual property (Case T-115/02 AVEX v OHIM - Ahlers (a) [2004] ECR†II-2907, paragraph 11).

15††††††The intervener-s application and response, in so far as they refer to the written submissions lodged by the applicant and the intervener before OHIM and to the decisions delivered by OHIM in the opposition proceedings, are inadmissible because the general reference they contain cannot be linked to the pleas in law and arguments developed in the intervener-s application and response.

†Substance

16††††††The applicant relies on a single plea in law, alleging that the Board of Appeal infringed Article 8(1)(b) of Regulation No 40/94 in finding that there was no likelihood of confusion between the mark applied for and the earlier mark. It relies essentially on five factors: the limitation of the goods taken into account for the earlier mark, the determination of the relevant public, the similarity of the signs, the distinctive character of the earlier mark and the fact that the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) had found that there was a likelihood of confusion between the signs.

†The limitation of the goods considered as being covered by the earlier mark and the similarity of the goods

†The contested decision

17††††††In paragraph 31 of the contested decision, the Board of Appeal held that, in response to the intervener-s request put forward pursuant to Article 43(2) and (3) of Regulation No 40/94, the applicant had not furnished proof that the earlier mark had been put to genuine use in Germany. It concluded therefrom that, in order to determine whether there is a likelihood of confusion, only the goods for which proof of genuine use had not been requested by the intervener, that is, -multi-dose dry powder inhalers containing corticoids...