Case T-425/03

AMS Advanced Medical Services GmbH

v

Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for the Community trade mark AMS Advanced Medical Services — Earlier national word mark AMS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 — Request for proof of genuine use made for the first time before the Board of Appeal — Article 43(2) and (3) of Regulation No 40/94’

Judgment of the Court of First Instance (Fifth Chamber), 18 October 2007   II-4270

Summary of the Judgment

1. Community trade mark — Appeals procedure — Appeals before the Community judicature

   (Council Regulation No 40/94, Arts 8(1)(b), and 74)

2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services

   (Council Regulation No 40/94, Art. 8(1)(b))

3. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services

   (Council Regulation No 40/94, Art. 8(1)(b))

4. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark

   (Council Regulation No 40/94, Art. 43(2) and (3))

1.  Where it is based on Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, opposition to the registration of a Community trade mark requires the Office for Harmonization in the Internal Market (Trade Marks and Designs) to adjudicate on whether the conflicting marks are identical or similar and whether the goods and services covered by those marks are identical or similar.

   Consequently, the fact that the party which requests the Court of First Instance to set aside the decision of the Board of Appeal which upheld opposition proceedings brought against registration of the mark applied for did not dispute, before the Board of Appeal, the similarity of the conflicting marks cannot in any way divest the Office of the power to adjudicate on whether those marks were similar or identical Likewise, therefore, that fact cannot deprive that party of the right to challenge, in the factual and legal context of the dispute before the Board of Appeal, the findings of that body on this point.

   (see paras 28, 29)

2.  There is, for the relevant public, consisting of average consumers in the United Kingdom, and professionals and specialists of the medical sector in the United Kingdom, a likelihood of confusion between the figurative sign ‘AMS Advanced Medical Services’, in respect of which registration as a Community mark was sought for ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants’ included in class 5 of the Nice Agreement and for ‘hospitals, convalescent homes, sanatoriums; medical, hygienic and beauty care; medical research, bacteriology and chemical research; development of medicines, foodstuffs with pharmaceutical properties and other health care products, and conducting medical and clinical examinations, consultancy and support for others for these activities; scientific and industrial research, in particular medical, bacteriological or chemical research; opticians’ services; consultancy for health care professionals in the development, establishing and conducting of therapy programmes and the testing of the aforesaid therapy programmes by means of studies' in Class 42 of the same agreement, and the earlier national word mark AMS registered for ‘surgical, medical and veterinary apparatus and instruments; suture materials; medical devices for the control of urological disorders and impotence; prosthetic articles; penile prostheses; urinary prostheses; artificial sphincters; parts and fittings for all the aforesaid goods’, all included in Class 10 of that agreement.

   The goods and services in respect of which registration of the mark is sought are similar to the goods and services covered by the earlier mark, given the close link between the goods and services in question in respect of their intended use, and the complementary nature of the goods in relation to the services.

   Moreover, the conflicting signs are similar because the dominant element of the word sign of the trade mark applied for and the only element of the earlier trade mark were identical.

   (see paras 51, 65, 87, 89)

3.  In assessing whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the comparison must be made between the signs as they were registered or as they appear in the trade mark application, regardless of whether they are used alone or together with other marks or indications.

   (see para. 91)

4.  Pursuant to Article 43(2) and (3) of Regulation No 40/94 on the Community trade mark, for the purposes of examining an opposition introduced under Article 42 of that regulation, the earlier mark is presumed to have been put to genuine use as long as the applicant does not request proof of that use. The presentation of such a request therefore has the effect of shifting the burden of proof to the opponent to demonstrate genuine use (or the existence of proper reasons for non-use) upon pain of having his opposition rejected. For that to occur, the request must be made expressly and timeously to the Office for Harmonization in the Internal Market (Trade Marks and Designs).

   In order for such a request to be regarded as having been made timeously to the Office it must be formulated before the Opposition Division.

   It is apparent from a reading of Article 43 of Regulation No 40/94 in conjunction with Rule 22 of Regulation No 2868/95 implementing Regulation No 40/94 that, after the Office has received notice of opposition to a Community trade mark application, it forwards that opposition to the applicant for that mark and sets it a period within which to file its observations in that regard. Given that the request for proof of genuine use of the mark constitutes, according to Article 43(2) of Regulation No 40/94, a request which can only be made by the applicant for the Community trade mark, it must be made expressly before the Opposition Division, since that request has the effect of changing the nature of the proceedings by imposing on the opponent an obligation to which he was not necessarily subject.

   In the absence of such a request before the Opposition Division and if that division did not make a decision on whether the earlier mark had been put to genuine use, the Board of Appeal, which has had a request for proof of genuine use of that mark brought before it for the first time, would be led to re-examine a decision on the basis of a new request which raises a matter which the Opposition Division was not able to examine and on which it did not rule in its decision.

   Although the continuity, in terms of their functions, between the Opposition Division and the Board of Appeal, implies a re-examination of the case by the Board, it cannot, in any event, justify the submission of such a request for proof of genuine use for the first time before the Board of Appeal, since that continuity in no way implies an examination by the Board of Appeal of a case which is different from the one submitted to the Opposition Division, namely a case whose scope would have been extended by the addition of the preliminary matter of the genuine use of the earlier mark.

   (see paras 105-108, 113)