CJEU Order C-81/11 Longevity - RESVEROL 8 Mar 2012

ORDER OF THE COURT (Fifth Chamber)

8 March 2012 (*)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 8(1)(b) – Application for Community word mark RESVEROL – Opposition by the proprietor of the earlier international word mark LESTEROL – Assessment of the likelihood of confusion – Rights of the defence)

In Case C-81/11 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 16 February 2011,

Longevity Health Products Inc., established in Nassau (Bahamas), represented by J. E. Korab, Rechtsanwalt,

appellant,

the other party to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant at first instance,

THE COURT (Fifth Chamber),

composed of M. Safjan, President of the Chamber, E. Levits and M. Berger (Rapporteur), Judges,

Advocate General: J. Mazák,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Longevity Health Products Inc. (‘Longevity Health Products’) seeks to have set aside the judgment of the General Court of the European Union of 16 December 2010 in Case T-363/09 Longevity Health Products v OHIM – Gruppo Lepetit (RESVEROL) (‘the judgment under appeal’), by which that court dismissed its action brought against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 9 July 2009 (Case R 1204/2008-2, ‘the contested decision’), relating to opposition proceedings between Gruppo Lepetit SpA and Longevity Health Products Inc.

Legal context

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). However, that first regulation, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2004 L 70, p. 1, ‘Regulation No 40/94’), continues to apply to this case.

3 Article 8(1) of Regulation No 40/94 provides:

‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b) 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.’

Background to the dispute

4 The background to the dispute was set out by the General Court in paragraphs 1 to 10 of the judgment under appeal as follows::

‘1 On 19 July 2006, the applicant … filed an application for registration of a Community trade mark at [OHIM] pursuant to … Regulation … No 40/94.

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

3 The goods and services for which registration was sought are, in particular, 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 and veterinary preparations; preparations for health care; dietetic substances adapted for medical use, preparations of trace elements for human and animal use, food supplements for medical purposes, mineral food supplements, vitamin preparations”.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2/2007 of 15 January 2007.

5 On 16 April 2007, Gruppo Lepetit SpA filed a notice of opposition under Article 42 of Regulation No 40/94 … to 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 international word mark LESTEROL, registered on 5 May 1960 under number 231327, which has effect in Austria, the Benelux countries, Germany, France, Hungary and Romania, and designates the goods in Class 5 corresponding to the following description: “Preparation for combating arteriosclerosis”.

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 ...

8 On 25 July 2008, the Opposition Division upheld the opposition.

9 On 19 August 2008, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 … against the decision of the Opposition Division.

10 By [the contested decision], the Second Board of Appeal of OHIM dismissed the appeal. In essence, it found that the goods concerned were identical or similar, that the marks at issue displayed at least a medium degree of visual and phonetic similarity and that, conceptually, the marks had no meaning. The Board of Appeal held that there was a likelihood of confusion between the Community trade mark applied for and the earlier mark and that, in any event, that likelihood could not be ruled out on the basis that the relevant public, composed of health professionals and average consumers in Austria, the Benelux countries, Germany, France, Hungary and Romania, had an above-average level of attention.’

The procedure before the General Court and the judgment under appeal

5 By application lodged at the General Court Registry on 17 September 2009, Longevity Health Products brought an action for the annulment of the contested decision.

6 It is apparent from the introductory paragraphs of the judgment under appeal that, first, the General Court refused, by decision of 2 March 2010, to allow the lodging of a reply. Second, no application for a hearing was submitted by the parties to the proceedings within the period of one month from notification of closure of the written procedure.

7 In support of its action, Longevity Health Products relied on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.

8 By the judgment under appeal, the General Court dismissed that action.

9 As regards, in the first place, the relevant public and its average level of attention, the General Court found, in paragraph 24 of the judgment under appeal, that ‘in the light of the goods at issue, the level of attention of the relevant public composed of professionals and end consumers of cosmetics, pharmaceutical preparations and printed material relating to those goods will be relatively high’.

10 As regards, in the second place, the comparison of the goods at issue, the General Court found, in paragraph 25 of the judgment under appeal, that ‘the applicant does not dispute the Board of Appeal’s finding … that those goods are identical or similar’.

11 As regards, in the third place, the comparison of the signs at issue, the General Court examined, in paragraphs 27 to 30 of the judgment under appeal, whether there were visual, phonetic or conceptual similarities between the signs. In that regard, it held as follows:

‘27 As regards, first of all, the visual comparison of the signs, the Board of Appeal rightly found … that the earlier mark LESTEROL and the trade mark applied for RESVEROL were both composed of eight letters, six of which were common to both marks, that the marks contained the same sequence of vowels, ‘e’, ‘e’, ‘o’, and the same suffix ‘erol’, and that only the initial letters, ‘l’ and ‘r’, and the fourth letters, ‘t’ and ‘v’, were different. In addition, although it is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end …, it cannot be inferred from this, however, that in the present case the difference between the letters ‘l’ and ‘r’ can prevent the signs at issue from being similar, since, first, both letters are consonants and, second, the consumer will not stop at the first letter, but will consider at least the first syllable. Further, the next two letters in the first syllables of the signs at issue are identical. Thus, the differences between the marks cannot counteract the similarities and it must be found that there is an average degree of visual similarity.

28 As regards, next, the phonetic comparison of the signs, it must be held, as the Board of Appeal found …, that in the countries concerned the marks at issue are pronounced as they are written. In addition, the marks at issue both contain three syllables with the same number of letters, and sound similar as the vowels used are the same. The marks also have identical suffixes. The first syllables of the signs at issue also sound equally similar since, first, two of their three letters are identical and, second, the initial letters, ‘l’ and ‘r’, are constrictive consonants that are similar sounding. Further …, the consumer tends to pay greater attention to the beginning of a mark than to the end. In the light of the foregoing, the differences between the initial letters are not sufficiently striking so as to counteract the phonetic similarity of the marks. Consequently, it must be held that there is an average degree of phonetic similarity.

…

30 As regards, lastly, the conceptual comparison of the signs, it must be held … that no relationship can be established between the signs at issue and chemical nomenclature and that, in any event, the signs have no meaning.’

12 In paragraph 32 of the judgment under appeal, the General Court held that ‘since the signs at issue are similar and the goods covered identical or similar, the Board of Appeal [had] rightly found … that there was a likelihood of confusion.’ In paragraph 33 of that judgment, the General Court also held that, ‘[g]iven the degree of similarity found between the marks and the identical nature of the goods concerned, the fact that the level of attention of the relevant public is above average, since that public is composed of health professionals and end consumers of health products, is not sufficient to exclude the possibility that that public might believe that the goods at issue come from the same undertaking or, as the case may be, from economically-linked undertakings’.

13 As regards Longevity Health Products’ argument relating to an alleged failure to use the earlier mark, the General Court rejected that argument, in paragraph 34 of the judgment under appeal, as ‘inadmissible in so far as the applicant [had failed to] submit a request to OHIM, pursuant to Article 42(2) of Regulation No 207/2009, for proof of genuine use of the mark.’ The General Court held that the production of such proof cannot be required in the context of an action before it, when it was not required before OHIM.

Forms of order sought by the parties

14 Longevity Health Products claims that the judgment under appeal should be set aside and OHIM ordered to pay the costs.

15 OHIM contends that the appeal should be dismissed in its entirety and Longevity Health Products ordered to pay the costs.

The appeal

16 In support of its appeal, Longevity Health Products raises two grounds, alleging (i) a procedural defect relating to the General Court’s refusal to allow the lodging of a reply and (ii) breach of Article 8(1)(b) of Regulation No 40/94.

17 Under Article 119 of its Rules of Procedure, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, dismiss the appeal in whole or in part by reasoned order.

The first ground of appeal, alleging a procedural defect relating to the General Court’s refusal to allow the lodging of a reply

18 By its first ground of appeal, Longevity Health Products complains that, in refusing its application to lodge a reply, the General Court infringed European Union procedural law and Longevity Health Products’ right to be heard and its right to judicial protection.

19 In that connection, it should be noted that, as the action was brought against an OHIM decision, Article 135(2) of the Rules of Procedure of the General Court provides that that the application and the responses may be supplemented by replies and rejoinders, where the President, on a reasoned application made within the prescribed period, considers such further pleading necessary and allows it in order to enable the party concerned to put forward its point of view. Thus, the decision whether or not to allow Longevity Health Products to lodge a reply, further to its application to that effect, was a matter for the General Court’s discretion and, therefore, by refusing the former’s application to lodge a reply, the General Court in no way infringed the rules of European Union law to which it is subject (order of 22 October 2010 in Case C-84/10 P Longevity Health Products v OHIM, paragraph 24).

20 In addition, Longevity Health Products’ right to be heard and right to judicial protection were not infringed by such a refusal, since it set out in its application before the General Court the complaints and arguments by which it sought annulment of the contested decision and it had the possibility, in accordance with Article 135a of the Rules of Procedure of the General Court, to submit, within a period of one month from notification of closure of the written procedure in its action, a reasoned application for the purposes of obtaining a hearing, which, however, it failed to do (order in Longevity Health Products v OHIM, paragraph 25).

21 It follows that the General Court’s refusal to allow Longevity Health Products to lodge a reply – by its decision of 2 March 2010 – cannot be regarded as amounting to a procedural defect affecting the lawfulness of the judgment under appeal.

22 Having regard to the foregoing, the first ground of appeal must be rejected as clearly unfounded.

The second ground of appeal, alleging infringement of Article 8(1)(b) of Regulation No 40/94

23 This ground of appeal is divided into two parts.

24 By the first part of its second ground of appeal, concerning the degree of attentiveness of the relevant public, Longevity Health Products submits that the public concerned may be regarded as having an increased level of attention with regard to the goods at issue, since these are connected to human health in the broadest sense. It is a fact well known to consumers that, as far as trade names derived from chemical nomenclature are concerned, the slightest differences may be decisive.

25 First of all, in so far as this first part of the second ground of appeal must be interpreted as meaning that Longevity Health Products also complains that the General Court failed to examine its arguments relating the level of attention of the consumers of pharmaceutical products, it must be pointed out that the General Court held, in paragraph 24 of the judgment under appeal, that the level of attention of the relevant public composed of professionals and end consumers of pharmaceutical preparations must be regarded as ‘relatively high’ and, in paragraph 33 of that judgment, that it must be regarded as ‘above average’. The complaint in question is therefore clearly unfounded.

26 In addition, it must be pointed out that the findings relating to the characteristics of the relevant public and its degree of attention, perception or attitude represent appraisals of fact (see, to that effect, Case C-144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 51, the order of 9 July 2010 in Case C-461/09 P The Wellcome Foundation v OHIM, paragraph 20, and the order in Longevity Health Products v OHIM, paragraph 29).

27 Under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on a point of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 68, Case C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I-0000, paragraph 49 and order in Longevity Health Products v OHIM, paragraph 30).

28 Consequently, since Longevity Health Products challenges the factual appraisal by the General Court and does not allege any distortion of the facts or evidence submitted to that court, the first part of the second ground of appeal must be rejected as clearly inadmissible.

29 By the second part of the second ground of appeal, concerning the comparison of the signs, Longevity Health Products complains that the General Court failed to consider the merits of its arguments, limiting itself to the opinion that the obvious similarities between the two marks at issue were sufficient to justify the assumption that there was a likelihood of confusion within the meaning of trade mark law.

30 First, Longevity Health Products submits that, phonetically, there are clear differences between the signs at issue which, given the utmost importance of a trade mark’s pronunciation for the impression that consumers will retain of it, are sufficient reason alone to rule out a ‘a likelihood of confusion’ within the meaning of Article 8(1)(b) of Regulation No 40/94. Second, the General Court overestimated the visual similarity between the signs. The fact that the two words are combinations of largely the same letters is not sufficient to make them visually similar. The fact that the order of the letters is different should be taken into consideration, and account also taken of the first letter, which is the most decisive letter for the visual impression. Third, Longevity Health Products submits that the proprietor of the trade mark LESTEROL does not use that mark and has even removed the product to be designated by that trade mark from the market. That fact alone is sufficient to rule out any likelihood of confusion.

31 Longevity Health Products concludes that the visual similarity between the marks at issue is eclipsed by the differences relied on and that, therefore, the General Court ought to have annulled the contested decision.

32 It should be noted that, by its first two arguments – which simply reproduce, in almost identical terms, the arguments already submitted at first instance – Longevity Health Products in actual fact disputes the visual, phonetic and conceptual comparison of the marks at issue carried out by the General Court in paragraphs 27 to 30 of the judgment under appeal, which led that court to conclude, in paragraphs 31 to 33 of that judgment, that those marks were very similar. It must therefore be found that, by its arguments, Longevity Health Products again seeks to call into question the factual appraisal by the General Court and to have the Court of Justice substitute its own appraisal.

33 As is apparent from paragraph 27 above, since Longevity Health Products does not allege any distortion of the facts or evidence submitted to the General Court, such an appraisal cannot be reviewed by the Court of Justice in the context of an appeal.

34 As regards Longevity Health Products’ third argument, relating to an alleged failure to use the earlier mark, it must be held that the General Court was justified, in paragraph 34 of the judgment under appeal, in rejecting that argument as inadmissible, since Longevity Health Products had not submitted a request to OHIM for the proprietor of the earlier mark to provide proof of genuine use of that mark. According to settled case-law, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM, as provided for in Article 63 of Regulation No 40/94, and that legality must be assessed in the light of the information available to the Boards of Appeal when they adopted those decisions. The General Court cannot therefore re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (see, to that effect, Les Éditions Albert René v OHIM, paragraphs 136 to 138, and the orders in The Welcome Foundation v OHIM, paragraphs 25 to 27, and in Case C-546/10 P Wilfer v OHIM [2011] ECR I-0000, paragraph 41).

35 It follows that the second part of the second ground of appeal must be rejected as being in part clearly inadmissible and in part clearly unfounded.

36 The appeal must therefore be dismissed.

Costs

37 Under Article 69(2) of the Rules of Procedure of the Court of Justice, applicable in appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs and Longevity Health Products has been unsuccessful, the latter must be ordered to pay the costs.

On those grounds, the Court (Fifth Chamber) hereby orders:

1. The appeal is dismissed.

2. Longevity Health Products Inc. shall pay the costs.

[Signatures]

* Language of the case: English.

Order of 8 Mar 2012, C-81/11 (Longevity - RESVEROL), ECLI:EU:C:2012:132.