General Court: list of goods and services must clearly indicate their nature

In Golam v Office for Harmonisation in the Internal Market (OHIM) (Case T-486/12), the General Court has upheld a decision of the First Board of Appeal of OHIM in opposition proceedings.

The dispute at issue in this case related to an application by Sofia Golam for registration of the word sign METABOL as a Community trademark (CTM) in respect of goods in Classes 5, 16 and 30 of the Nice Classification. Portuguese company Pentafarma-Sociedade Técnico-Medicinal SA filed an opposition based on the earlier word mark METABOL-MG, which covers goods in Class 5, relying on the ground set out in Article 8(1)(b) of the Community Trademark Regulation (207/2009).

The Opposition Division of OHIM upheld the opposition in respect of all of the goods in Class 5, with the exception of "herbicides". The First Board of Appeal of OHIM annulled the Opposition Division’s decision in part and dismissed the appeal in part, which triggered the appeal to the General Court by the applicant.

In essence, the applicant relied on two arguments:

1. the Board of Appeal had not taken into consideration certain objections she had put forward; and
2. infringement of Article 8(1)(b) of the regulation.

Regarding the first argument, the court replied that, even though Article 75 of the regulation requires OHIM to substantiate its decisions, this does not imply that the Board of Appeal must address every single point of the parties’ reasoning, as long as the board provides the court with sufficient material for it to exercise its power of review. The court determined that, since the Board of Appeal had found that there was likelihood of confusion between the marks for certain goods, it followed that it had implicitly rejected the objections to which the applicant referred.

With regard to the second - and more interesting - plea, the court referred to settled case law according to which the likelihood of confusion should be assessed globally, in accordance with the perception that the relevant public has of the signs and of the goods or services in question, taking into consideration all the relevant factors such as the interdependence between the similarity of the signs at issue and that of the goods or services covered.

Guided by the above-mentioned case law, the court first upheld the conclusion of the Board of Appeal that the relevant public consisted of both Portuguese professionals and average Portuguese consumers displaying a heightened degree of attention.

The point that was next analysed by the court - the comparison of the goods - seems to be the issue that is the most worthy of note in this decision. The applicant argued that the goods marketed under the trademark applied for were dietary supplements which had no connection with the pharmaceutical products protected by the earlier trademark. The court replied that the trademark application was not made in respect of dietary supplements and, according to Article 26(1)(c) of the regulation, the application for a CTM must contain a list of the goods and services regarding which registration is requested. Moreover, Article 43(1) provides that the applicant may at any time restrict such list of goods/services. The court concluded that it was clear from the relevant provisions of the regulation that an applicant has the burden of both indicating the list of goods and services in respect of which the registration is requested and of providing a description clearly indicating the nature of such goods and services.

Since the applicant was not sufficiently diligent to make this specific reference to the goods and their nature, the Board of Appeal could compare only the goods in Class 5 as they were referred to in the trademark application (ie, "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 vermin; fungicides, herbicides") and the "pharmaceutical products, pharmaceutical preparations, medicines for humans and animals, sanitary products and disinfectants" covered by the earlier mark. The court considered that, even though there were slight differences between the products covered by the two marks, such differences would not be perceived as notable by the relevant public (healthcare professionals and end consumers), who would perceive the goods as belonging to the same general category of healthcare products.

Finally, when comparing the signs at issue, the court upheld the conclusion of the Board of Appeal that both signs were substantially similar, visually and phonetically, because of the presence of the word element ‘metabol’, as the element ‘mg’ at the end of the earlier mark was negligible in the overall impression given by the two marks. Furthermore, the two signs were deemed to be identical conceptually because the relevant Portuguese public would perceive the word ‘metabol’ as referring to the Portuguese word 'metabolismo', while the element ‘mg’ had no meaning.

The court concluded that there was a likelihood of confusion between the marks; this conclusion was not in any way invalidated by the applicant’s argument that the relevant public with regard to the earlier mark consisted of Portuguese professionals and average Portuguese consumers. The court recalled that, according to Article 1(2) of the regulation and established EU case law, CTMs are unitary and have equal effect throughout the European Union; it was therefore sufficient that a likelihood of confusion within the meaning of Article 8(1)(b) existed in only part of the European Union.

The most interesting and didactic aspect of the decision seems to be the court’s warning as to the importance of carefully detailing applications for registration and of indicating as precisely as possible the goods and services covered and their respective nature. While, in this case, both signs were almost identical, the outcome of the case could have been different if the applicant had clearly indicated that the goods covered under the mark applied for were dietary supplements.

Manuel Lopes Rocha and Carolina Leão d’ Oliveira, PLMJ - AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon