Court confirms that pharmaceutical and veterinary preparations are highly similar
In Cadila Healthcare Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-288/08, March 15 21012), the General Court has upheld a decision of the Second Board of Appeal of OHIM in a dispute involving Cadila Healtcare Ltd (the applicant), OHIM (the defendant) and Novartis AG (the intervener).
The court reiterated that the likelihood of confusion between two marks must be assessed globally, based on the perception by the relevant public of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case and, in particular, the interdependence between the similarity of the signs and the similarity of the goods or services covered.
On July 18 2003 Cadila Healtcare Ltd filed an application for the registration of the trademark ZYDUS as a Community trademark with OHIM pursuant to the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)). The goods in respect of which registration was sought fell within Class 5 of the Nice Classification, among others. The application was opposed by Novartis based on earlier rights in the word mark ZIMBUS, registered on February 6 2003 for “pharmaceutical preparations” in Class 5.
By a decision of May 31 2007, the Opposition Division of OHIM upheld the opposition in respect of “pharmaceutical, veterinary and sanitary preparations and fungicides”, but rejected it in respect of “dietetic substances adapted for medical use” and “disinfectants”. On July 13 2007 Cadila filed a notice of appeal against the decision of the Opposition Division insofar as it had upheld the opposition in part.
On May 7 2008 the Second Board of Appeal of OHIM upheld Cadila's appeal in part - in respect of “fungicides” - and accordingly annulled the decision of the Opposition Division insofar as it had refused the application in respect of those goods. In contrast, the board confirmed the decision of the Opposition Division insofar it had upheld the opposition in respect of “pharmaceutical, veterinary and sanitary preparations”. The board found that the goods were identical, or highly similar, to the pharmaceutical preparations covered by the earlier mark and, in addition, observed that the marks at issue were phonetically similar.
By a letter lodged at the Court Registry on September 13 2011, the applicant informed the General Court that the earlier mark had not been in force since August 29 2011, as Novartis had not renewed its registration prior to that date and, consequently, there could no longer be any likelihood of confusion between the two marks.
The court stated that, according to Articles 46 and 47 of Regulation 207/2009:
“Community trademarks are registered for a period of 10 years from the date of filing of the application and that registration may be renewed. The request for renewal, furthermore, shall be submitted within a period of six months ending on the last day of the month in which protection ends. The fees shall also be paid within this period. Failing this, the request may be submitted and the fees paid within a further period of six months following the day referred to in the first sentence, provided that an additional fee is paid within this further period.”
With regard to the relevant public, the court pointed out that it should take into account the average consumer of the category of products concerned, bearing in mind that the average consumer’s level of attention may vary depending on the category of goods or services in question. In the case at hand, the relevant public consisted of consumers purchasing pharmaceutical preparations and related goods, including healthcare professionals.
Turning to the comparison of the goods, the court took into account the nature of the goods, their intended purpose and their method of use. The Board of Appeal had found that the pharmaceutical and veterinary preparations covered by the mark applied for were identical to the pharmaceutical preparations protected by the earlier mark. The applicant claimed that veterinary preparations and pharmaceutical preparations are clearly different, since:
- they are not aimed at the same public;
- they do not share the same distribution channels; and
- they are neither interchangeable nor complementary.
In this regard, the court stated that the applicant’s argument that the category of "pharmaceutical preparations" covers exclusively goods intended for the treatment of human beings is not supported by the Nice Classification. It followed from the foregoing that the goods at issue must be considered to be in part identical and in part very similar.
Turning to the comparison of the marks, the court concluded that they were phonetically similar, as the letters 'I' and 'Y' are pronounced identically in several European languages. The marks were also found to produce the same general visual impression.
Regarding the likelihood of confusion, the court stated that the relevant consumers were faced both visually and phonetically with the marks designating the goods at issue. It was not possible to attribute a dominant weight to the visual aspect or the phonetic aspect in the overall assessment of the likelihood of confusion. Even assuming that the goods are usually purchased without the mark having to be pronounced, and the visual aspect is therefore of greater importance, there would still be a likelihood of confusion because the marks have a certain degree of visual similarity.
The action was thus dismissed and Cadila was ordered to pay the costs.
Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan
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