General Court provides guidance on similarity between pharmaceuticals and other Class 5 goods

European Union

In Ferring BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-169/14), the General Court has provided useful guidance on the similarity between pharmaceutical products and other goods in Class 5 of the Nice Classification. The level of attention of the relevant public, which consisted of various groups of professionals and consumers, was also discussed in detail. This judgment will be a useful reference in future conflicts regarding pharmaceutical trademarks.

In 2011 Kora Corp Ltd filed a Community trademark (CTM) application for the word mark KORAGEL in Class 5. The application covered 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 and herbicides.

Upon publication, Ferring BV filed an opposition based on its earlier CTM registration for the word mark CHORAGON, which also covered pharmaceutical products and substances. The Opposition Division of OHIM rejected Ferring’s opposition on the ground that there was no likelihood of confusion. The Fourth Board of Appeal of OHIM confirmed the decision.

Ferring brought the matter before the General Court, claiming that the Board of Appeal’s decision should be annulled and the CTM application for KORAGEL should be rejected. In particular, Ferring alleged that there was a likelihood of confusion between KORAGEL and CHORAGON, at least in the minds of German-speaking consumers.

The court found that the relevant public was made up of both the general public and professionals in the medical and pharmaceutical field. With regard to pharmaceutical, veterinary and sanitary preparations, the relevant public consisted of end consumers and professional users. The court found that the relevant public for material for stopping teeth and dental wax consisted only of specialised healthcare professionals. On the contrary, food for babies was found to be aimed solely at end consumers.

Ferring submitted that the level of attention of the relevant public must be considered to be average, including with regard to pharmaceutical products, and that the assessment of the likelihood of confusion must be based on the perception of the part of the public displaying the lowest degree of attentiveness. The court disagreed, noting that pharmaceutical products without prescription must be assumed to be of concern to consumers. In addition, where a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products. The court concluded that medicines, whether or not issued on prescription, can be regarded as receiving a high degree of attentiveness by consumers. This is also the case for pharmaceutical products intended to treat minor complaints and ailments, such as painkillers issued without a prescription.

For all the other goods covered by the CTM application for KORAGEL, the court found that the professional part of the relevant public would have a high degree of attentiveness.

With regard to food for babies, where the relevant public consisted of consumers only, the court held that these goods are likely to be the subject of a level of attention which is at least above average. The same was found to be true of preparations for destroying vermin, fungicides and herbicides, partly due to consumer awareness of possible health risks.

The court concluded that the level of attention of the various groups of the relevant public would be at least above average in respect of all the goods covered by the CTM application.

Ferring disputed the Board of Appeal’s finding that preparations for destroying vermin, fungicides and herbicides, as well of food for babies, were dissimilar to pharmaceutical products. With regard to herbicides, the court observed that the objective of the products, the active substances as well as the distribution channels were different from those of pharmaceutical products and, considering both the intended purpose and nature of the products, there was no competition or complementarity. Therefore, the goods were found to be dissimilar.

However, contrary to the Board of Appeal, the court found that there was a low degree of similarity between preparations for destroying vermin and pharmaceutical products, as well as between fungicides and pharmaceutical products. These findings were based on the possibility that some preparations for destroying vermin as well as some types of fungicides may be used in the treatment of humans or animals.

Moreover, Ferring claimed that food for babies is similar to pharmaceutical products and substances, as the two categories of products are complementary and share the purpose of satisfying the special nutritional requirements or deficiencies of infants. The court observed that food for babies covers mainly everyday consumer goods without medical purpose or properties; however, some food for babies has a certain connection with pharmaceutical products and substances and, therefore, the court found that there was a low degree of similarity of the goods.

The court then found that the visual similarity of the signs KORAGEL and CHORAGON was low and the aural similarity was above average, at least concerning the German-speaking public. A conceptual comparison was not possible.

Even though the court disagreed with the Board of Appeal to some degree regarding the similarity of the goods, the court agreed with the overall assessment that there was no likelihood of confusion. The judgment includes comprehensive reasoning on how to balance the factors to consider in the overall assessment of the likelihood of confusion, including the visual and aural aspects in view of the conditions of purchase of pharmaceutical products. Whether or not one agrees with all the court’s findings, this judgment may serve as a useful reference in future similar cases.

Lisbet Andersen, Aumento Law Firm, Copenhagen

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