Decision seemingly expands scope of protection of pharmaceutical marks
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In Bial-Portela & Ca SA v Sanofi-Aventis Deutschland GmbH (Opposition B 1 346 883, June 7 2010), the Opposition Division of the Office for Harmonization in the Internal Market has held that there was a likelihood of confusion between the marks AZULIB and AZURIL for goods in Class 5 of the Nice Classification.
On August 1 2007 Portuguese company Bial-Portela & Ca SA filed an application for the registration of the word mark AZULIB as a Community trademark in respect of the following goods in Class 5:
"pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax, disinfectants; preparations for destroying vermins; fungicides, herbicides."
German company Sanofi-Aventis Deutschland GmbH lodged an opposition against the application based on its earlier Greek registration for the mark AZURIL for “pharmaceutical preparations” in Class 5.
The Opposition Division held that there was a medium degree of visual similarity and a high degree of aural similarity between the marks. In particular, the Opposition Division found that the marks:
- coincided in the four letters 'A', 'Z', 'U' and 'I';
- both included the letter 'L' (albeit in a different position); and
- had a similar rhythm and intonation.
The fact that the main visual and aural similarities were placed in the initial part of the marks was considered to be particularly relevant.
However, the most interesting aspect of the decision lies in the comparison of the goods. In particular, the Opposition Division stated that "fungicides" were identical to "pharmaceutical preparations" because fungicides comprise antimycotics, which have an application in the medical field.
The Opposition Division also held that "preparations for destroying vermins" were similar to "pharmaceutical preparations", because they are "chemical preparations which could be seen as sharing a similar purpose with some pharmaceutical preparations, can be produced by the same undertakings, have the same public [and] share the same distribution channels".
Further, the Opposition Division stated that "sanitary preparations for medical purposes; dietetic substances adapted for medical use; plasters, materials for dressings; material for stopping teeth, dental wax, disinfectants" were similar to "pharmaceutical preparations" because:
- they are substances prepared with the purpose of treating or preventing a disease;
- their nature and purpose are similar to those of Sanofi-Aventis' products;
- the end users coincide; and
- the goods covered by both marks are often used in combination.
The Opposition Division's approach to the similarity of goods in Class 5 seems to be extremely broad. Until now, EU case law considered that pharmaceutical preparations had, at the most, a certain degree of similarity with fungicides and preparations for destroying vermins. Therefore, the conclusion that fungicides and pharmaceutical preparations are identical is a huge step, which seems to expand the scope of protection of pharmaceutical trademarks. Similarly, this means that marks covering fungicides and preparations for destroying vermins can be regarded as obstacles for the registration of pharmaceutical trademarks.
The decision seems to follow a recent trend whereby pharmaceutical products have been held to be similar to other goods in Class 5.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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