EuG (Fourth Chamber) dated 10 September 2008 - Bio Visc vs. PROVISC and DUOVISC

(Community trade mark – Opposition proceedings – Application for Community word mark BioVisc – Earlier international word marks PROVISC and DUOVISC − Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T106/07,

Alcon Inc., established in Hünenberg (Switzerland), represented by M. Graf and R. Schulz, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by S. Laitinen, and subsequently by A. FolliardMonguiral, 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

*Acri.Tec AG Gesellschaft für ophthalmologische Produkte, established in Hennigsdorf (Germany), represented by M. von Welser, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 8 February 2007 (Case R 660/2006-2) concerning opposition proceedings between Alcon Inc. and *Acri.Tec AG Gesellschaft für ophthalmologische Produkte,

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

composed of O. Czúcz, President, J.D. Cooke and I. Labucka (Rapporteur), Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 11 April 2007,

having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 9 July 2007,

having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 26 July 2007,

further to the hearing on 15 May 2008,

gives the following

Judgment

 Background to the dispute

1        On 6 February 2004, the intervener, *Acri.Tec AG Gesellschaft für ophthalmologische Produkte, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2        Registration was sought for the word mark BioVisc.

3        The goods for which registration was sought fall 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: ‘Ophthalmic preparations and sterile solutions for intraoperative eye operations’. On 4 October 2006 the list of goods was restricted as follows: ‘Sterile solutions for intra-operative eye operations’.

4        The application was published in the Community Trade Marks Bulletin No 49/2004 of 6 December 2004.

5        On 7 March 2005 the applicant, Alcon Inc., filed a notice of opposition against registration of the mark applied for. The opposition was based inter alia on the following earlier registrations:

–        international registration No 553751 for the word mark PROVISC, dated 24 April 1990, with effect in Germany, Spain, France, Italy, Austria, Portugal and the Benelux countries, in respect of ‘products for use in ophthalmology’ in class 5;

–        international registration No 659615 for the word mark DUOVISC, dated 2 September 1996, with effect in Germany, Spain, France, Italy, Austria, Portugal and the Benelux countries, for ‘ophthalmic pharmaceutical preparations’ in class 5.

6        The opposition, based on the relative grounds for refusal in Article 8(1)(a) and (b) of Regulation No 40/94, referred to all the goods covered by the earlier registrations and was directed against all the goods covered by the mark applied for.

7        By decision of 30 March 2006 the Opposition Division upheld the opposition in its entirety, holding that, having regard in particular to the visual and phonetic similarities of the marks at issue and the fact that the goods concerned were identical, there was a likelihood of confusion.

8        On 17 May 2006 the intervener filed an appeal with OHIM against the Opposition Division’s decision.

9        By decision of 8 February 2007 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the Opposition Division’s decision and granted the application for registration. Essentially, the Board of Appeal held that the existence of visual, phonetic and conceptual differences between the signs at issue was sufficient to exclude any likelihood of confusion on the part of the relevant public.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

11      OHIM and the intervener contend that the Court should:

–        dismiss the appeal;

–        order the applicant to pay the costs.

 Law

12      In support of its action the applicant raises a single plea alleging infringement of Article 8(1)(b) of Regulation No 40/94.

 Arguments of the parties

13      As regards the similarity of the goods concerned, the applicant and OHIM submit that the goods designated by the marks at issue, namely the ‘sterile solutions for intraoperative eye operations’ in class 5 covered by the mark applied for and ‘products for use in ophthalmology’ and the ‘ophthalmic pharmaceutical preparations’ in class 5 covered by the earlier marks, are identical. The goods concerned are directly in competition and are used for the same medical indications. The intervener, on the other hand, takes the contrary view.

14      As regards the similarity of the conflicting signs, the applicant maintains that they are almost identical from the visual point of view, since they have the letter combination ‘o’, ‘v’, ‘i’, ‘s’ and ‘c’. The only difference is that the mark applied for has the prefix ‘bi’ and the earlier marks contain the first letters ‘d’ and ‘u’ and ‘p’ and ‘r’ respectively. Moreover, the marks at issue are written in standard characters.

15      The applicant adds that on a phonetic level the marks at issue are confusingly similar as there is only a slight difference in pronunciation between them. In both cases, the dominant element of the marks is ‘visc’, since that term has a sibilant and is more emphasised than the ‘softer’ portion of the marks beginning with the prefixes ‘bio’, ‘duo’ and ‘pro’.

16      On a conceptual level, the applicant submits that the term ‘visc’ is not descriptive of the goods covered by the marks applied for and would most likely be perceived by consumers as an invented word. The prefixes ‘bio’, ‘duo’ and ‘pro’, by contrast, are purely descriptive as ‘bio’ commonly stands for biologically sound products, ‘duo’ for double or complementary items, and ‘pro’ for professional use or a favourable quality of the products.

17      Consequently, consumers would associate the goods offered under the term ‘biovisc’ with the applicants’ earlier marks since the marks at issue are also almost identical from a conceptual point of view.

18      The applicant concludes from all of the foregoing that the degree of visual, phonetic and conceptual similarity of the marks at issue is therefore very high. Consumers would therefore not recognise the slight differences between the marks at issue and would assume that the mark applied for also belongs to the applicant, or at least to a related company. Therefore, there is a likelihood of confusion to the detriment of the applicant.

19      In support of the foregoing considerations, the applicant further claims that the term ‘visc’ is distinctive and cannot be found in any dictionary. In view of the hundreds of thousands of trademark registrations the citation, by the intervener, of 21 others marks with the same suffix is not an indication that that term is not distinctive. In addition, the mere fact of a trade mark registration is not an indication that the term is indeed not distinctive on the market as long as the applicant does not prove that those goods are actually used as goods on the market.

20      Although the intervener stated in its Community trade mark application that ophthalmologic treatments are administered by highly qualified persons, like surgeons or specialist doctors of ophthalmology, the likelihood of confusion is very high even then, since the products, their medical use and the marks at issue are identical, with the exception of two letters forming part of those marks. It would not be so likely if the professionals were to distinguish the origins of products of different medical categories and use.

21      At the hearing, the applicant challenged the definition of the relevant public given by the Board of Appeal, according to which that public consists of professionals who are very attentive when purchasing the relevant products. Such a finding may be true with respect to the sterile solutions used in ophthalmologic operations, but not with respect to products such as eye drops or solutions used to clean contact lenses. Those products are used by average consumers.

22      OHIM fully supports the findings of the Board of Appeal.

23      As to the applicant’s submissions, at the hearing, challenging the definition of the relevant public, OHIM claims that the argument put forward at that stage of the proceedings is inadmissible on the ground that it is out of time.

24      The intervener submits that there is no similarity between the signs at issue. As regards the relevant public, it submits that its products, just like the applicants’, are used only by specialists in ophthalmology. It is clear that those specialists are particularly attentive to the products they use.

 Findings of the Court

25      As a preliminary point, it must be observed that the applicant’s argument alleging that the Board of Appeal’s definition of the relevant public is incorrect was put forward for the first time before the Court at the hearing. Furthermore, that is not disputed by the applicant. It follows that that argument, which is out of time, cannot be taken into consideration by the Court.

26      As regards the relevant public, the earlier international marks are protected in Germany, Spain, France, Italy, Austria, Portugal and the Benelux countries. Therefore, as the Board of Appeal rightly stated in paragraph 36 of the contested decision, the relevant public is composed of consumers from those Member States. The goods concerned are not mass consumption items, but are very specific products used for medical purposes. Sterile solutions for intraoperative eye operations will be purchased, as the Board of Appeal held, by professionals who can be expected to take more care when purchasing and notice differences which might not be perceived by a normally circumspect consumer.

27      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 is not to 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. Furthermore, under Article 8(2)(a)(iii) of Regulation No 40/94 ‘earlier trade marks’ means trade marks registered under international arrangements which have effect 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.

28      According to settled case-law, the likelihood of confusion as to the commercial origin of the goods or services must be assessed globally, according to the perception that the relevant public has of the signs and the goods or services concerned, and by taking account of all the factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the trade marks and that of the goods or services (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] II-2821, paragraphs 30 to 33, and the case-law cited.

 Similarity of the relevant goods

29      In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (see, by way of analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 23).

30      Only the intervener submits that the relevant goods are not identical.

31      It must be recalled in that regard that, according to the Opposition Division, the intervener’s goods were included in the description of the applicant’s goods and were therefore identical. That finding was not challenged by the intervener in the proceedings before OHIM and the Board of Appeal concurred with the Opposition Division’s finding in the contested decision.

32      The Court holds that ‘sterile solutions for intraoperative eye operations’ referred to in the trade mark application are included in ‘pharmaceutical products for use in ophthalmology’ and for ‘ophthalmic pharmaceutical preparations’ covered by the earlier marks. It follows that the goods covered by the signs at issue are identical.

 Similarity of the signs at issue

33      The global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (Case T292/01 Philips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47).

34      As regards the visual comparison of the signs at issue, as the Board of Appeal rightly held in paragraph 38 of the contested decision, their suffixes ‘visc’ are identical and the difference concerns the prefixes, to which consumers normally attach more importance (Joined Cases T183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello (MUNDICOLOR) [2004] ECR II-965, paragraph 81). Those prefixes are ‘bio’ for the mark applied for and ‘pro’ and ‘duo’ for the earlier marks. Thus, the signs at issue have clear differences which do not justify the conclusion that they are visually similar.

35      From the phonetic point of view, it is necessary to determine whether the differences between the signs at issue are sufficient to distinguish them.

36      First, the prefixes cannot create for the average consumer an overall impression of phonetic similarity. The difference between the signs at issue is sufficiently significant to change their perception from a phonetic point of view. Those prefixes are pronounced differently and have different intonations.

37      Second, the Court holds that, as the Board of Appeal rightly stated in paragraph 39 of the contested decision, in the overall assessment of the aural impression of the signs at issue the identical suffixes will not cause the other letters of the respective marks to recede and remain unimportant or heard less clearly.

38      Furthermore, the applicant does not put forward any specific argument as regards its claim that the dominant element of the marks at issue is ‘visc’.

39      Accordingly, the Court holds that the differences between the signs at issue resulting from the difference in their prefixes is sufficient to rule out a visual similarity and to distinguish them phonetically.

40      As regards the comparison of the conflicting signs from a conceptual point of view, it must be recalled that each sign is composed of two parts. The earlier marks are composed of the elements ‘pro’ and ‘visc’ and ‘duo’ and ‘visc’ respectively. The Board of Appeal rightly held, in paragraphs 40 and 42 of the contested decision, that the prefix ‘pro’ could be understood by the relevant public as meaning ‘professional’ and the prefix ‘duo’ as referring to ‘two’ or double. As the Board of Appeal also stated, the term ‘visc’ may well be perceived as evoking viscosity, which is an important element in the type of opthalmic solutions concerned.

41      The mark applied for is composed of the elements ‘bio’ and ‘visc’. The prefix ‘bio’ is used in words generally used to designate the relationship between a science or a technique and biology. The element ‘visc’ of the mark applied for has the same meaning as the element featured in the earlier marks (see paragraph 40 above).

42      It is clear from the foregoing that the signs at issue have different conceptual meanings which the relevant public can perceive and understand. Consequently, it must be held that there is a conceptual difference between the signs at issue.

 The likelihood of confusion

43      In the light of the foregoing, in the overall assessment of the marks at issue, the Board of Appeal rightly held, in the contested decision, that the visual, phonetic and conceptual difference of the signs at issue were sufficient, in spite of the identity of the goods concerned, to preclude the similarities between the signs at issue from giving rise to a likelihood of confusion on the part of the specialist Community consumer as to the commercial origin of the goods concerned.

44      It follows from all of the foregoing that the single plea raised by the applicant must be dismissed.

45      Consequently the action will be dismissed in its entirety.

 Costs

46      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 was unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.

On those grounds,

THE COURT OF FIRST INSTANCE (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Alcon Inc. to pay the costs.