Chinese characters in pharma mark introduce element of conceptual difference

In Pharmazeutische Fabrik Evers GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-517/10, July 12 2012), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks HYPOCHOL and HITRECHOL.

On February 2007 Romanian company Ozone Laboratories Pharma SA applied to register the Community word mark HYPOCHOL in Class 5 of the Nice Classification in respect of “cholesterol-lowering pharmaceutical preparations; cholesterol-lowering dietary supplements adapted for medical use”.

On November 16 2007 German company Pharmazeutische Fabrik Evers GmbH & Co KG filed an opposition based on the following earlier German trademark in Class 5 covering, among other things, “drugs and pharmaceutical products”:

OHIM rejected the opposition. The Fourth Board of Appeal of OHIM dismissed the appeal based on the high degree of attention of the relevant public and the low degree of similarity between the marks, even though the goods were identical.

The opponent appealed to the General Court, arguing that:

• the marks were highly similar from a visual and phonetic point of view;
• neither of them had a conceptual meaning; and
• in light of the identical nature of the goods, there was a risk of confusion. 

The General Court confirmed that there was no likelihood of confusion between the marks.

First, the court held that the relevant public consisted of:

• patients suffering from cholesterol-related disorders;
• doctors prescribing pharmaceutical products or cholesterol-lowering supplements; and
• other professionals, such as pharmacists, who sell the goods in question.

The court noted that the relevant public had a high level of attention and, therefore, was more likely to notice the visual, phonetic and conceptual differences between the marks.

In particular, the court held that the prefixes ‘hypo’ and ‘hitre’ were visually different. From a phonetic point of view, the court stated that the syllables ‘po’ and ‘tre’ had no phoneme in common and that the letters ‘y’ and ‘i’ are pronounced differently in German. 

Moreover, according to the court, the relevant public would associate the figurative elements of the earlier mark with Chinese or Asian medicine. Contrary to the board (which had found that a conceptual comparison appeared impossible because neither of the marks had any meaning in German), the court found that the Chinese characters introduced an element of conceptual difference. Moreover, the court held that the suffix ‘chol’ could be considered to be descriptive of the goods in question, while the prefix ‘hypo’ formed part of German terminology in the health sector, which further increased the differences between the signs.

This decision is a good illustration of the different levels of comparison that may apply when comparing two marks. It also highlights the importance of the differences in pronunciation from one country to the other within the Community (eg, ‘hi’ and ‘hy’ are phonetically identical in French, but not in German), which is particularly significant in the pharmaceutical field.

Jean-Philippe Bresson and Franck Soutoul, INLEX IP EXPERTISE, Paris