ASTEX TECHNOLOGY for pharmaceuticals similar to ASTEX for insecticides

European Union
In Astex Therapeutics Ltd v Office for Harmonization in the Internal Market (OHIM) (Case T-48/06, September 10 2008), the Court of First Instance (CFI) has held that there was a likelihood of confusion between the mark ASTEX TECHNOLOGY for pharmaceuticals and the earlier mark ASTEX for insecticides.
Astex Therapeutics Ltd applied for the registration of the figurative mark ASTEX TECHNOLOGY as a Community trademark for pharmaceuticals. Protec Health International Ltd opposed the application based on its earlier registered trademark ASTEX for, among other things, "insecticides for killing dust mites".
Both the Opposition Division and the Second Board of Appeal of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between ASTEX TECHNOLOGY and ASTEX. In particular, the Board of Appeal noted that the low degree of similarity of the goods was offset by the high degree of similarity of the marks. Moreover, there was a likelihood that the relevant public would believe that the goods came from the same source or from economically linked undertakings due to:
  • the broad scope of protection of the ASTEX mark;
  • the similarity of the distribution channels; and
  • the similarity of the purpose of the goods. 
Astex appealed to the CFI.
The CFI confirmed that there was a likelihood of confusion between the marks based on:
  • the distinctive character of the trademark ASTEX (an original term with no precise meaning in any language of the European Union); and
  • the high degree of similarity of the marks, which offset the low degree of similarity of the goods. 
With regard to the similarity of the goods, Astex argued that the goods were different in nature and had different purposes - namely, to promote the well-being of the recipient and to exterminate insects. Astex further argued that the nature of the goods should be the main criterion in assessing the similarity of the goods; the fact that the goods were of interest to the same group of people and might be found in pharmacies should have carried less weight.
The CFI confirmed prior case law (see CASTILLO (Case T-85/02) and ARTHUR ET FELICIE (Case T-346/04)) which established that all relevant factors must be taken into account in assessing the similarity of the goods - namely:
  • their nature;
  • their intended purpose;
  • their method of use;
  • their distribution channels; and
  • whether the goods are in competition with each other or complementary. 
The CFI found that the goods were intended, at least in part, for a similar purpose and use (ie, the prevention or treatment of a respiratory illness), and were partially in competition with each other and complementary to the extent that consumers would perceive a similarity within the meaning of Article 8(1)(b) of the Community Trademark Regulation (40/94). The distribution channels (ie, pharmacies) were also held to be similar.
In respect of the similarity of the marks, the CFI first noted that the word element of a trademark consisting of both figurative and word elements is not automatically the dominant element of the mark. However, the word 'astex' clearly constituted the dominant element of the mark ASTEX TECHNOLOGY since: 
  • it occupied a central position in the mark;
  • it was written in significantly larger letters; and
  • it is an original term with no meaning in any language of the European Union. 
With regard to the figurative element of the mark ASTEX TECHNOLOGY (ie, a stylized letter 'A'), the CFI held that consumers might not even notice - let alone remember - that this element was the letter 'A', since the letter was stylized and could be confused with a triangle or pyramid.
Astex also made an alternative claim for annulment of the board's decision based on its request to restrict the list of goods to exclude explicitly 'preparations for killing dust mites', among other things. The CFI rejected this claim, noting that the request was neither express nor unconditional. In order for the request to be admissible, Astex would have had to amend the list of goods before the end of the written procedure before the board. As this was not the case, the CFI concluded that the request had been put forward only before the court, without first being submitted to OHIM. Moreover, the request was conditional as it was subject to the prior condition that the goods concerned be found to be similar.
In addition, relying on Article 135(4) of the Rules of Procedure, the CFI held that the alteration of the characteristics of the goods at this stage would amount to changing the subject matter of the proceedings.
Astex also claimed that its action should be upheld as a result of:
  • the alleged change of ownership of the earlier trademark;
  • the purported dissolution of Protec Health; and
  • the fact that Protec Health had adduced no evidence of use of its mark such as to establish an enhanced reputation.
The CFI dismissed these claims under Article 135(4) as they had been raised for the first time before the court.
Astex's action was thus dismissed.
Tanya Meedom and Kasper Frahm, Plesner, Copenhagen

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