CJEU Order C-461/09 The Wellcome Foundation

ORDER OF THE COURT (Seventh Chamber)

9 July 2010 (*)

(Appeals – Community trade mark – Word mark FAMOXIN – Application for a declaration of invalidity made by the proprietor of the national word mark LANOXIN – Rejection of the application for a declaration of invalidity)

In Case C-461/09 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 23 November 2009,

The Wellcome Foundation Ltd, established in Greenford (United Kingdom), represented by R. Gilbey, avocat,

appellant,

the other parties to the proceedings being:

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

defendant at first instance,

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

party to the proceedings before the Board of Appeal of OHIM,

THE COURT (Seventh Chamber),

composed of R. Silva de Lapuerta, President of the Chamber, G. Arestis (Rapporteur) and J. Malenovský, Judges,

Advocate General: J. Mazák,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, The Wellcome Foundation Ltd (‘The Wellcome Foundation’) asks the Court to set aside the judgment of 23 September 2009 of the Court of First Instance of the European Communities (now ‘the General Court’) in Joined Cases T-493/07, T-26/08 and T-27/08 GlaxoSmithKline and Others v OHIM – Serono Genetics Institute (FAMOXIN) (‘the judgment under appeal’), by which that court dismissed three actions brought against the decisions of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 September 2007 (Case R 8/2007-1), 20 November 2007 (Case R 10/2007-1) and 19 November 2007 (Case R 9/2007-1), relating to cancellation proceedings between, on the one hand, GlaxoSmithkline SpA, Laboratórios Wellcome de Portugal Lda and The Wellcome Foundation and, on the other, Serono Genetics Institute SA.

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2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark (codified version) (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. None the less, given the date of the facts at issue, the present case is still governed by Regulation No 40/94.

3 Article 8 of Regulation No 40/94 stated:

‘1. 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.

2. For the purposes of paragraph 1, “Earlier trade marks” means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

…

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trade Mark Office;

…’

4 Under Article 52(1)(a) of Regulation No 40/94, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark as referred to in Article 8(2) of the regulation and the conditions set out in Article 8(1)(b) of the regulation are fulfilled.

5 Pursuant to Article 63 of Regulation No 40/94, actions may be brought before the Court against decisions of the Boards of Appeal of OHIM on appeals, on grounds of lack of competence, of infringement of an essential procedural requirement, infringement of the EC Treaty, of the regulation itself or of any rule of law relating to their application or misuse of power.

Background to the dispute

6 The background to the dispute was set out by the General Court in paragraphs 1 to 21 of the judgment under appeal as follows:

‘1 On 30 November 2001, Serono Genetics Institute SA filed an application for registration of a Community trade mark with [OHIM] in accordance with … Regulation … No 40/94 …

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, [the applicants at first instance] GlaxoSmithKline SpA, Laboratórios Wellcome de Portugal, Lda and The Wellcome Foundation … 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 …

6 GlaxoSmithKline relied on the earlier word mark LANOXIN, registered in Italy under No 758074 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 157610 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 31403 for the following goods in Class 5: “pharmaceutical preparations with digoxin for human use”;

– the word mark LANOXIN under Benelux trade mark registration No 63853 for the following goods in Class 5: “medicinal and pharmaceutical products”;

– the word mark LANOXIN under Danish trade mark registration No VR 198905795 for the following goods in Class 5: “pharmaceutical preparations with digoxin for human use”;

– the word mark LANOXIN under Irish trade mark registration No 59069 for, inter alia, the following goods in Class 5: “medical, pharmaceutical substances”;

– the word mark LANOXIN under United Kingdom trade mark registration No 752835 for the following goods in Class 5: “pharmaceutical preparations with digoxin for human use”;

– the word mark LANOXIN under Greek trade mark registration No 21480, registered for the following goods in Class 5: “pharmaceutical and medical products”;

– the word mark LANOXIN under Swedish trade mark registration No 366605 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 [at first instance].

10 Following that request, on 12 April 2006, The Wellcome Foundation withdrew its reliance on the Greek registration No 21480 and the Swedish registration No 366605 in support of the application for cancellation.

11 By three decisions of 30 October 2006, the Cancellation Division [of OHIM] rejected the … applications for cancellation [of the applicants at first instance].

12 On 21 December 2006, [those] applicants filed appeals pursuant to Articles 57 to 62 of Regulation No 40/94 … against those decisions of the Cancellation Division [of OHIM].

13 By decision of 14 September 2007 (Case R 8/2007-1), the First Board of Appeal [of OHIM] dismissed the appeal lodged by GlaxoSmithKline and upheld the … decision [of the Cancellation Division of OHIM], stating that the earlier mark, registered in Italy under No 758074, 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 [of OHIM] dismissed the appeal lodged by Laboratórios Wellcome de Portugal and upheld the … decision [of the Cancellation Division of OHIM], stating that the earlier mark, registered in Portugal under No 157610, 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 … decision [of the Cancellation Division of OHIM], stating that the earlier marks, registered in Finland under No 31403, in the Benelux countries under No 63853, in Denmark under No VR 1989 05 795, in Ireland under No 59069 and in the United Kingdom under No 752835, 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 [of OHIM] based its rejection of the … appeals [of the applicants at first instance], 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 [of OHIM] considered that goods intended to treat metabolic disorders by injection are, in the majority of cases, used by healthcare professionals in hospitals or private clinics and that injections are generally administered by professionals. It deduced therefrom that patients would probably not see the mark under which those goods are sold. In its view, however, it is possible that some patients, such as diabetics, for example, would administer the injections themselves. In that case, the goods would nevertheless be used under the supervision of a professional. With regard to cardiovascular illnesses, the Board of Appeal [of OHIM] stated that, since those illnesses are very serious, it must also be expected that the goods on which GlaxoSmithKline’s applications for cancellation are based are prescribed by doctors and, accordingly, used by patients under the supervision of professionals. The relevant public is therefore made up of professionals. The Board of Appeal [of OHIM] added that the end consumers could also constitute the relevant public but that, in the present case, they would be under the guidance of professionals.

19 The Board of Appeal [of OHIM] concluded that, although there is a certain similarity between the goods covered by the marks at issue, since they are pharmaceutical preparations, that similarity is in part offset by the fact that the end consumers are treated by different categories of physicians and that the goods covered by the marks had different therapeutic indications. The final consumers must, in such cases, be considered to have a high degree of attentiveness.

20 Furthermore, the Board of Appeal [of OHIM] took the view that, taking into account the significant differences between the marks at issue, both visually and aurally, and the low level of conceptual similarity, the marks were only very slightly similar.

21 It concluded therefrom that there was no likelihood of confusion. In that regard, it pointed out that, in the case of the Community trade mark, the relevant public was always to be regarded as being constituted by professionals and since the general public would, in every case, be under the guidance of professionals, it could not be regarded as being required to choose between the marks at issue.’

The procedure before the General Court and the judgment under appeal

7 By applications lodged at the Registry of the General Court on 28 December 2007 (Case T-493/07) and 21 January 2008 (Cases T-26/08 and T-27/08), the applicants at first instance brought three actions seeking the annulment of 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). Pursuant to Article 50 of the Rules of Procedure of the General Court, Cases T-493/07, T-26/08 and T-27/08 were joined for the purposes of the oral procedure and the final judgment.

8 In support of their respective actions before the General Court, the applicants at first instance raised two pleas in law, alleging, respectively, an infringement of Article 56(2) and (3) of Regulation No 40/94 and of Articles 52(1)(a) and 8(1)(b) of that regulation.

9 By the judgment under appeal, the General Court dismissed those actions.

10 In particular, in its response to the first plea, which was rejected as unfounded, the General Court held as follows in paragraphs 39 to 43 of the judgment under appeal:

‘39 … it is apparent from the OHIM files in Cases R 8/2007-1, R 9/2007-1 and R 10/2007-1 that the applicants [at first instance] submitted before the Board of Appeal [of OHIM] that the earlier trade marks ought to be regarded as having been registered in connection with cardiovascular illnesses.

40 Nevertheless, the applicants [at first instance] submit that it would be difficult, even for medical and pharmaceutical specialists, clearly to delimit the different “therapeutic areas”, in particular with regard to cardiovascular problems and metabolic disorders.

41 In support of that allegation, the applicants [at first instance] adduce a number of press articles.

42 Those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the [General] Court … is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94 …, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, and it is not [necessary] to assess their probative value (see, to that effect, Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19 and the case-law cited).

43 Accordingly, the Court rejects the … argument [of the applicants at first instance] that it would be difficult, even for medical and pharmaceutical specialists, clearly to delimit the different “therapeutic areas”.’

11 As regards the second plea, which was also rejected, the General Court held the following, in paragraphs 49 to 58 of the judgment under appeal, in relation to the relevant public:

‘49 The applicants [at first instance] submit that the relevant public is composed of professionals and patients who are normally attentive and, in that regard, that those patients are always under the supervision of professionals.

50 It must be borne in mind that, when the products in question are medicinal products requiring a doctor’s prescription prior to their sale to end consumers in pharmacies, the relevant public is composed not only of end consumers, but also of professionals, that is, doctors who prescribe the medicinal product and pharmacists who sell that prescribed product (Case C-412/05 P Alcon v OHIM [2007] ECR I-3569, paragraphs 52 and 63).

51 In the present case, it must be held that, in accordance with the case-law cited above, the Board of Appeal [of OHIM] took into account, with regard to the relevant public, both healthcare professionals and end consumers. However, the Board of Appeal [of OHIM] took the view that the end consumers would be under the supervision of professionals.

52 That assessment must be upheld.

53 In respect of pharmaceutical preparations which are intended to treat metabolic disorders and administered by injection, the Court holds, like the Board of Appeal [of OHIM], that since in most cases it is professionals who administer the injection, the patient will not generally see the trade mark under which that product is sold and, in cases where the patients themselves administer the injection, they do so under the supervision of a professional. Since those goods are not available over the counter but are issued on prescription, the prior intervention of professionals is required.

54 With regard to the goods covered by the earlier trade marks which are intended to treat cardiovascular illnesses and may be administered not only by injection but also orally, the Board of Appeal [of OHIM] was correct in noting that, having regard to the gravity of those illnesses, those goods are prescribed by a doctor. The applicants [at first instance] do not contest this. It follows that those goods are of necessity used by the end consumer under the supervision of a professional.

55 It should be noted, in addition, that the degree of attentiveness of the average consumer of pharmaceutical preparations must be determined on a case-by-case basis, according to the facts in the case-file, especially the therapeutic indications of the goods in question.

56 In the present case, it must be noted that the relevant public, as defined in paragraphs 52 and 53 above, will have a higher than average degree of attentiveness (see, to that effect, the judgment of 13 February 2008 in Case T-146/06 Sanofi-Aventis v OHIM – GD Searle (ATURION) …, paragraph 27).

57 In that regard, it must be noted that, since the whole process of marketing the goods at issue is aimed at the end consumer’s acquisition of them, the role played by healthcare professionals must be in part balanced against the high degree of attentiveness which may be shown by those consumers when those goods are prescribed, in the light of the fact that they are pharmaceutical products, and, consequently, against those consumers’ ability to make those professionals take into account their perception of the trade marks at issue and, in particular, their requirements or preferences (Alcon v OHIM, paragraph 61).

58 It follows that the … argument [of the applicants at first instance] that the relevant public has merely a normal degree of attentiveness must be rejected.’

12 In addition, in the context of the second plea, the General Court held the following, in paragraphs 60 to 65 of the judgment under appeal, in relation to the comparison of the goods:

‘60 The applicants [at first instance] submit that the degree of similarity between the goods at issue is high. OHIM takes the view, however, that the Board of Appeal [of OHIM] was correct to hold that there was merely some similarity between the goods under comparison.

61 It should be borne in mind that, in accordance with case-law, in order to undertake the assessment of that similarity all the relevant factors characterising the relationship between those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Alcon v OHIM, paragraph 72).

62 In the present case, it is appropriate to note that the goods at issue are of the same type, namely pharmaceutical preparations, have the same intended purpose, namely to treat human health problems, are aimed at the same consumers, namely healthcare professionals and patients, and use the same distribution channels, namely health centres and pharmacies. They are, as the applicants [at first instance] submit, also potentially complementary.

63 However, the pharmaceutical preparations at issue have different therapeutic indications.

64 It is therefore irrelevant whether, as the applicants [at first instance] submit, patients can suffer from both illnesses at the same time and whether the treatments may be simultaneous and complementary, since the pharmaceutical preparations at issue have a specific medical use.

65 In those circumstances, it is appropriate to conclude, as the Board of Appeal [of OHIM] correctly concluded, that there is a certain degree of similarity between the goods concerned.’

13 Similarly, in the context of the second plea, the General Court noted in paragraph 66 of the judgment under appeal, in relation to the comparison of the signs, first, the settled case-law according to which the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components. The General Court then held, in paragraphs 68 to 71 of the judgment, as follows:

‘68 Firstly, with regard to a visual comparison of the signs, it must be noted that the trade marks at issue share the final element “oxin”. Nevertheless, it must be held, as the Board of Appeal [of OHIM] held, that that ending is not out of the ordinary in the pharmaceutical field. Moreover, contrary to the … submissions [of the applicants at first instance], the Board of Appeal [of OHIM] did not base that assessment on existing marks containing the final element “oxin”. In addition, it must be pointed out that, contrary to the … submissions [of the applicants at first instance], the elements at the beginning of the conflicting signs, that is to say, “lan” and “fam” respectively, are visually different. Consumers generally take more note of a mark’s beginning than of its ending (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 81, and Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraphs 64 and 65). It follows that the initial element “lan” of the earlier marks and the initial element “fam” of the mark applied for are likely, on an overall visual impression, to have more of an impact than the final element “oxin”.

69 Secondly, with regard to an aural comparison of the conflicting signs, it must be noted that the pronunciation of the first syllable of the Community trade mark, namely “fa”, and that of the first syllable of the earlier marks, namely “la”, have both similarities, by reason of the presence of the vowel “a”, and differences, due to the distinction between the consonants “f” and “l”. The second syllables of the marks at issue, “mo” and “no”, will also be pronounced differently despite their common vowel “o”. The signs have only one syllable in common, that is to say, their final syllable “xin”. Moreover, decisive weighting cannot be given to the final element “oxin”, as OHIM correctly pointed out, since it is an element used for pharmaceutical preparations. Accordingly, the view must be taken that the first syllables of the signs at issue are likely to have a greater impact aurally than their last syllable.

70 Thirdly, with regard to a conceptual comparison of the signs, it must be noted that, even if it were to be accepted that the relevant public might link the element “oxin” of the trade marks at issue to digoxin, it will be perceived as descriptive of pharmaceutical preparations. The Court thus finds, like the Board of Appeal [of OHIM], that the conceptual similarity must be regarded as slight.

71 Having regard to the foregoing, the Board of Appeal [of OHIM] was correct in taking the view that the trade marks are only very slightly similar.’

14 Finally, also in the context of the second plea, in paragraphs 73 to 76 of the judgment under appeal, the General Court held as follows in relation to the likelihood of confusion:

‘73 In the present case, it has been held, on the one hand, that the goods at issue have a certain similarity and, on the other, that the conflicting signs are only slightly similar. In addition, it has been observed that the public’s degree of attentiveness is higher than average, for both professionals and patients.

74 It is appropriate to note, on the latter point, as the Board of Appeal [of OHIM] observed, that, in the present case, the patient will, in every case, be guided by professionals (see paragraph 52 above).

75 In those circumstances, and having regard to the facts of the present case, the overall conclusion must be that there is no risk that the public will be led to believe that goods bearing the word mark FAMOXIN come from undertakings which hold the earlier word marks LANOXIN or from an undertaking economically linked to them.

76 Thus the Board of Appeal [of OHIM] correctly found that there is no likelihood of confusion between those marks within the meaning of Article 8(1)(b) of Regulation No 40/94.’

Forms of order sought by the parties before the Court of Justice

15 The Wellcome Foundation claims that the Court of Justice should set aside the judgment under appeal and order OHIM to pay the costs.

16 OHIM contends that the Court of Justice should dismiss the appeal and order The Wellcome Foundation to pay the costs.

The appeal

17 Pursuant to Article 119 of the Rules of Procedure, where the 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 by reasoned order.

18 In support of its appeal, The Wellcome Foundation raises a single ground of appeal, alleging an infringement of Article 52(1)(a) of Regulation No 40/94, in conjunction with Article 8(1)(b) thereof. That ground of appeal is made up of four parts.

The first part, concerning the degree of attentiveness of the relevant public

19 By the first part of its ground of appeal, concerning the degree of attentiveness of the relevant public, The Wellcome Foundation claims that the General Court committed an error, in paragraph 56 of the judgment under appeal, in finding that, in the present case, the relevant public will have a higher than average degree of attentiveness since the pharmaceutical preparations at issue are used by the end consumer under the supervision of a professional. The General Court should have taken account of the perception of the public that is the most exposed to a likelihood of confusion, namely patients who self-administer those preparations when they are sold without prescription. The General Court wrongly based its finding on the premiss that those preparations are issued solely with a medical prescription.

20 In that regard, 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, inter alia, Case C-144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 51, and the orders of 15 February 2008 in Case C-243/07 P Brinkmann v OHIM, paragraph 35, and of 24 September 2009 in Case C-481/08 P Alcon v OHIM, paragraph 16). The same is thus necessarily true for the finding as to the degree of attentiveness of that public.

21 It should also be noted that, in accordance with Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on points 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 does not, save where they distort the facts or evidence, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22; the judgments of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, paragraph 53; and Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 68).

22 In the present case, it must be found that by the first part of its ground of appeal The Wellcome Foundation is essentially seeking, in relation to the finding as to the degree of attentiveness of the relevant public, to have the Court of Justice re-examine the factual assessment made by the General Court which led it to conclude, in paragraph 56 of the judgment under appeal, that in the present case the relevant public will have a higher than average degree of attentiveness.

23 Consequently, since The Wellcome Foundation is not claiming that the facts or the evidence submitted to the General Court were distorted, the first part of the ground raised in support of its appeal must be rejected as manifestly inadmissible.

The second part, concerning the comparison of the goods

24 By the second part of its ground of appeal, concerning the comparison of the goods, The Wellcome Foundation complains that in paragraph 42 of the judgment under appeal the General Court found the evidence referred to in paragraph 41 of that judgment which it adduced in support of its claim relating to the similarity and complementary nature of the goods at issue to be inadmissible, as it was produced for the first time before it. It claims that, since that evidence is merely an amplification of the arguments and evidence already submitted before OHIM, the General Court had no legal basis on which to refuse to take it into consideration.

25 In that regard, it must be noted that, as the General Court rightly pointed out in paragraph 42 of the judgment under appeal, the purpose of actions before it 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.

26 It follows from that provision that facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before the General Court (see Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paragraph 54, and Les Éditions Albert René v OHIM, paragraph 137).

27 It is also apparent from that provision that the General Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (see Les Éditions Albert René v OHIM, paragraph 138).

28 It therefore follows that the decision of the General Court, in paragraph 42 of the judgment under appeal, not to take account of the evidence produced for the first time before it is certainly justified in the light of Article 63 of Regulation No 40/94 and, consequently, the complaint raised in that regard by The Wellcome Foundation must be rejected as manifestly unfounded.

29 In addition, in the context of the second part of its ground of appeal, The Wellcome Foundation submits that in describing the degree of similarity of the products the General Court omitted, in paragraphs 60 to 65 of the judgment under appeal, to provide clear, precise, accurate and comprehensible reasons for its – allegedly – vague finding that there is ‘a certain degree of similarity between the goods concerned’. Since the General Court did not provide a clear indication as to the degree of similarity of the goods which it found to exist and since that is a crucial consideration when assessing likelihood of confusion, those paragraphs do not satisfy the requirement to provide clear, reliable and comprehensible reasons.

30 It is important to note, in that regard, that the General Court is obliged to provide reasons which will allow the Court of Justice to exercise judicial review; in particular they must make it possible for the Court to consider whether there has been any distortion of the evidence submitted to the General Court (see Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 22, and the case-law cited).

31 In the present case, it is apparent from a mere reading of paragraphs 62 to 64 of the judgment under appeal that the General Court clearly set out its assessment of the degree of similarity of the goods at issue. Similarly, it reasoned to the required legal standard the conclusion which it reached in paragraph 65 of that judgment.

32 It must therefore be held that the General Court provided sufficient reasoning to enable the Court of Justice to review the legality of the decision. Consequently, the complaint raised in that regard by The Wellcome Foundation must be rejected as manifestly unfounded.

33 Finally, still in the context of the second part of its ground of appeal, The Wellcome Foundation submits that, in the light of the undisputed facts set out in paragraph 62 of the judgment under appeal and the case-law, the General Court had, in any event, no legal or factual basis for finding, in paragraph 65 of that judgment, that the Board of Appeal of OHIM had correctly considered that there was a low level of similarity between the goods at issue. On the contrary, there is a high level of similarity between those goods in spite of the different therapeutic indications.

34 It must also be found that, by that complaint, The Wellcome Foundation actually seeks, as regards the degree of similarity of the goods at issue, to call into question the factual appraisal by the General Court which led it to its conclusion in paragraph 65 of the judgment under appeal, and thus seeks to have the Court of Justice substitute its own appraisal.

35 As is apparent from paragraph 21 above, such an appraisal cannot be reviewed by the Court of Justice in the context of an appeal.

36 Therefore, since no distortion of the facts or the evidence submitted to the General Court has been alleged in the present case, that complaint must be rejected as manifestly inadmissible.

37 Consequently, the second part of the ground of appeal must be rejected in its entirety as being, in part, manifestly unfounded and, in part, manifestly inadmissible.

The third part, concerning the comparison of the signs

38 By the third part of its ground of appeal, concerning the comparison of the signs, The Wellcome Foundation complains that the General Court wrongly based its conclusion, in paragraph 71 of the judgment under appeal, that the Board of Appeal of OHIM had correctly taken the view that the trade marks at issue were only very slightly similar on the – allegedly – erroneous premiss that the final element ‘oxin’ was insignificant or descriptive. In relegating that element to a very secondary role in the perception of the relevant public and in basing its findings primarily on alleged differences between the syllables ‘lam’ and ‘fam’, the General Court thus failed to carry out a global comparison of the signs.

39 It must be found, once again, that by that third part of its ground of appeal The Wellcome Foundation actually seeks, as regards the degree of similarity of the goods at issue, to call into question the factual appraisal made by the General Court which led it to its conclusion in paragraph 71 of the judgment under appeal, and thus seeks to have the Court of Justice substitute its own appraisal.

40 Consequently, since no distortion of the facts or the evidence submitted to the General Court has been alleged in the present case, the third part of the ground of appeal must be rejected as manifestly inadmissible.

The fourth part, concerning the likelihood of confusion

41 By the fourth part of its ground of appeal, concerning the likelihood of confusion, The Wellcome Foundation submits that the General Court adopted an incorrect basis for its conclusion, in paragraph 76 of the judgment under appeal, that the Board of Appeal of OHIM had correctly found that there was no likelihood of confusion between the marks at issue, in so far as the Court applied incorrect legal tests in defining the relevant public and in assessing the degree of similarity between the goods at issue and the signs at issue, as the applicant has set out in the first three parts of the ground of appeal.

42 In that regard, it should be noted that, by the fourth part of the ground of appeal, The Wellcome Foundation disputes the General Court’s conclusion as to the likelihood of confusion but makes no submissions other than those already made in the context of the first three parts of its ground of appeal, which relate to errors allegedly committed by the General Court as to the degree of attentiveness of the relevant public and in the assessment of the degree of similarity of the goods at issue and the signs at issue.

43 Since the first three parts of the ground of appeal have been rejected as being, in part, manifestly unfounded and, in part, manifestly inadmissible, the fourth part of that ground of appeal concerning the likelihood of confusion cannot succeed in any way and, consequently, it must also be rejected on the same grounds.

44 It is apparent from all of the foregoing considerations that the appeal must be dismissed in its entirety as being, in part, manifestly unfounded, and, in part, manifestly inadmissible.

Costs

45 Under Article 69(2) of the Rules of Procedure, which applies to 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 The Wellcome Foundation to be ordered to pay the costs and the latter has been unsuccessful, it must be ordered to pay the costs.

On those grounds, the Court (Seventh Chamber) hereby:

1. Dismisses the appeal;

2. Orders The Wellcome Foundation Ltd to pay the costs.

[Signatures]

* Language of the case: English.

Order of 9 Jul 2010, C-461/09 (The Wellcome Foundation - FAMOXIN), ECLI:EU:C:2010:421.