Appeal brought on 15 February 2006 by Bausch & Lomb Inc. against the judgment of the Court of First Instance delivered on 17 November 2005 in Case T-154/03: Biofarma SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-95/06 P)

(2006/C 108/06)

Language of the case: English

Parties

Appellant: Bausch & Lomb Inc. (represented by: M. Silverleaf QC, R. Black, B. Gerber and E. Kohner, Solicitors)

Other parties to the proceedings: 1. Biofarma SA; 2. Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

The appellant claims that the Court should:

Pleas in law and main arguments

The appellant submits that the judgment of the Court of First Instance (CFI) should be set aside on the following grounds:

In the Judgment, the CFI held that there was a likelihood of confusion on the part of the public between the two marks in issue. The appellant contends that, in reaching that conclusion, the CFI erred in law and/or acted in breach of procedure. The errors relied upon are summarised below.

The CFI erred in failing to consider either properly or at all whether the goods for which the competing marks are or are sought to be registered are similar goods. In the premises the CFI erred in law.

The CFI ought to have considered whether the goods for which registration is sought are similar to those upon which use of the conflicting mark has been established. Had the CFI done so, it should have concluded that they are not and accordingly that there was no basis for the application of Article 8(1)(b). Alternatively, it should have concluded that there is at most a passing similarity in kind and that such slight similarity, when weighed in the overall balance in determining whether there is a likelihood of confusion, requires a very high degree of similarity between the conflicting marks and reasons (which were not given) why the relevant public might expect them to come from commercially related sources.

The CFI erred in law in applying Article 8(1)(b) in its consideration of the relative similarity of the competing marks. It made its assessment not on the basis of a global assessment of the overall impression that the marks make on the eye or ear of the average consumer but on the basis of a minute dissection of the linguistic and verbal characteristics of the words forming the respective marks.

In assessing similarity, the CFI should have considered the marks as a whole and by reference to the visual and, in particular, aural impact of the whole of the conflicting marks upon the eye and ear of the average consumer. Further the CFI failed to take into account the fact that the products in issue are ones in relation to which it is common ground that one can expect the relevant public to take significant care both in selection and use. Had the CFI applied the correct approach, it would have concluded that the two marks both sound and look different.

The CFI failed to identify the relevant public and accordingly erred in law. The CFI erred in law in its application of Article 8(1)(b) in determining that patients form part of the relevant public. The CFI ought to have concluded in accordance with the law that the relevant public consists of medical professionals.

In carrying out its assessment of similarity, the CFI acted in a mechanistic manner. It failed to weigh up the similarities it had found and consider whether they led to a likelihood of confusion. Instead, it assumed this was the case. Having done so, the CFI proceeded to dismiss the differences between the respective marks and goods as not removing that likelihood. This it did without explaining its reasons. Accordingly, the CFI erred in law in its application of Article 8(1)(b) as interpreted by the ECJ and/or acted in breach of procedure, in particular Article 81 of the Rules of Procedure, in failing to state the grounds for its decision.

The CFI erred in law by not considering the level of attention of the average consumer of the goods concerned, and whether this may reduce the likelihood of confusion. It should have taken account of the particularly high level of attention exhibited by the average consumer when he prepares and makes his choice between the relevant goods and the effect this may have on the likelihood of confusion. Accordingly, the CFI erred in its application of Article 8(1)(b), as interpreted by the ECJ.