Limitation in description of services held to be artificial

European Union
In Omnicare Inc v Office for Harmonisation in the Internal Market (OHIM) (Cases T-289/09 and T-290/09, September 9 2011), the General Court has upheld decisions of the Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the word marks OMNICARE and OMNICARE CLINICAL RESEARCH on the one hand, and the figurative mark OMNICARE on the other.
 
In June 2000 US company Omnicare Inc filed applications for the registration of the word marks OMNICARE and OMNICARE CLINICAL RESEARCH as Community trademarks for “conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals” in Class 42 of the Nice Classification.
 
Yamanouchi Pharma GmbH, whose rights have been taken over by Astellas Pharma GmbH, filed an opposition against the applications on the basis of the following earlier German mark:
 
The earlier mark covered the following services:
 
services of organisation, business management and medical consultancy for medical practice, in particular for urological practice; distribution of literature, and printed matter for doctors for advertising use, in particular urologists; organisation of lectures, seminars, expositions and fairs for doctors, in particular urologists.”
 
The Opposition Division of OHIM rejected the oppositions. The Fourth Board of Appeal annuled the Opposition Division’s decisions, concluding that there was a likelihood of confusion between the marks. Omnicare appealed to the General Court.
 
At issue in these cases was:
 
  • whether the earlier trademark would be perceived as ‘Mnicare’ or ‘Omnicare’ (ie, whether the stylised ‘O’ would be perceived as a letter);
  • whether use of the earlier trademark for free services was sufficient to establish genuine use of the mark; and
  • whether the services covered by the trademarks were different, especially in light of the limitation excluding urologists.
Comparing the marks, the General Court stated that the earlier mark would necessarily be perceived as ‘Omnicare’, not ‘Mnicare’, even though the first letter ‘O’ was stylised. Therefore, the marks shared some important visual, phonetical and intellectual similarities.
 
The court also recognised the similarity of the services covered by the marks. Omnicare argued that, in light of the limitation, the potential customers would be different. However, the court found that it was artificial to claim to be able to conduct clinical research in a general manner and exclude urologists from those services. Thus, the services covered by the marks were highly similar, even though the list of goods had been limited, which is quite common in the medical/pharmaceutical field.
 
On the issue of use of the earlier mark, Omnicare submitted that the opponent’s services were provided free of charge and, therefore, there was no intention to maintain or create market shares. In this respect, the court referred to the decision of the Court of Justice of the European Union in Antartica v OHIM (Case C-320/07 P) and pointed out that:
 
even if the services for which the trademark is registered are offered free of charge, that does not of itself mean that that commercial company will not seek, by such use of its trademark, to create or maintain an outlet for those services.”
 
The court thus confirmed that genuine use had been shown.
 
The actions were dismissed.
 
Jean-Philippe Bresson and Franck Soutoul, INLEX IP EXPERTISE, Paris

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