CITRACAL held to be confusingly similar to CICATRAL

European Union
In Bayer Healthcare LLC v Office for Harmonization in the Internal Market (OHIM) (Case T-277/08, November 11 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the marks CITRACAL and CICATRAL.

On July 6 2000 Bayer Healthcare LLC filed an application for the registration of CITRACAL as a Community trademark for goods in Class 5 of the Nice Classification ("dietary supplements, including dietary supplements inclusive of calcium salt"). On June 26 2001 Uriach-Aquilea OTC SL opposed the application on the basis of its earlier Spanish registration for the trademark CICATRAL for goods in Classes 1 ("chemical products and specialities") and 5 ("pharmaceutical products and specialities of all types").

Upon Bayer's request, Aquilea was asked to furnish proof that its mark had been put to genuine use in the member state in which the mark was protected during the five-year period preceding the date of publication of the application. The Opposition Division of OHIM requested that Aquilea furnish such proof by January 1 2004.

Aquilea submitted its observations on December 30 2003. However, the Opposition Division received the documents only on January 7 2004. The issue was thus whether the documents had been filed within the deadline. On March 17 2006 OHIM granted restitution in integrum, and on January 30 2007 the Opposition Division upheld the opposition. It found that there was a likelihood of confusion among the relevant public in Spain due to the fact that:
  • the marks were visually and phonetically similar; and
  • the goods were similar to a certain extent.
Bayer appealed, but the Board of Appeal upheld the decision of the Opposition Division. Bayer appealed to the CFI.

According to Bayer, the translation of the description of the goods covered by the earlier mark was inadequate and, therefore, Aquilea had not demonstrated that its mark had been put to genuine use. In contrast, OHIM contended that, in view of the documents provided, the goods for which the earlier mark had been used were 'healing salves'. Therefore, the comparison of the goods had been conducted correctly.

The CFI stated that the legal requirements concerning the supporting documents and their translation into the language of the opposition proceedings are substantive conditions of the opposition - and not conditions of admissibility. According to the CFI, the contents of the leaflet in English "made it possible to identify the goods covered by the earlier mark clearly and to find that there was no doubt about the properties of the goods at issue". The translation 'healing salve' used in the board's decision seemed to be correct. The board was thus correct to make a comparison between "dietary supplements, including dietary supplements inclusive of calcium salt" and "healing salves", and its decision in that regard was also correct.

Bayer further claimed that it was an error to consider that all the goods in Class 5 were similar only because they fell within the same class. In contrast, OHIM contended that the conceptual differences between the marks could not offset their high degree of visual and phonetic similarity.

The CFI stated that the differences relating to the ways in which the products are administered and their therapeutic indications could not prevail over the nature and common intended purpose of the goods. Taking into account the high degree of visual and phonetic similarity between the marks, the CFI found that they were very similar overall. The action was thus dismissed.
Paula Sailas, Berggren Oy Ab, Helsinki

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