New approach on similarity of goods and services in PROCAPS Case

European Union

In Biofarma v Procaps SA (Case R 867/2007-4, November 24 2008), the Fourth Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has reversed a decision of the Opposition Division of OHIM in which the latter had held that the trademarks PROCAPS and PROCAPTAN were similar.

Colombian company Procaps SA filed an application for the registration of the mark PROCAPS as a Community trademark in Classes 5, 35, 39, 40 and 44 of the Nice Classification. In 2005 Biofarma lodged an opposition based on an Italian and an international registration for the trademark PROCAPTAN for goods in Class 5 (pharmaceuticals). The Opposition Division held that the marks were dissimilar without analyzing the identity or similarity of the goods and services involved. The Fourth Board of Appeal reversed, holding that the goods and services were similar and that there was a likelihood of confusion between the marks.
The analysis of the board seems logical as far as the comparison between goods in Class 5 on the one hand, and services in Classes 35 and 44 on the other is concerned. The board found that the “import, export, purchasing and sales of consumer goods and products of all kinds, in particular pharmaceutical, veterinary preparations” in Class 35 involved the goods manufactured by Biofarma. The board referred to the September 24 2008 decision of the Court of First Instance (CFI) in O STORE, in which it was held that “retail and wholesale services, including online retail store services, on account of the very general wording can include all goods, including those covered by the earlier trademark so that they display similarities to the goods concerned” (for further details please see “O STORE held to be invalid for certain services”). Applied to pharmaceuticals, this meant that the relationship between “retail services” specified in broad terms in Class 35 and pharmaceuticals in Class 5 was complementary. Therefore, the board concluded that Procaps’s services in Class 35 were similar to Biofarma’s goods in Class 5.
With regard to services in Class 44, the board found that “medical services, veterinary services, hygienic and beauty care for human beings or animals” also involved the use of pharmaceutical products. The board held that such goods and services are intended for use in the context of medical treatment and have identical channels of distribution. Therefore, the relationship between these goods and services was clearly complementary. This finding is in line with Community case law.
Interestingly, the board also found that services in Classes 39 (“distribution of consumer goods and products of all kinds, in particular pharmaceutical, veterinary and sanitary preparations”) and 40 (“manufacture of consumer goods and products of all kinds, in particular pharmaceutical, veterinary and sanitary preparations”) were highly similar to pharmaceuticals in Class 5.
With regard to the comparison of the signs, the board held that the marks were similar from a visual and phonetic point of view. In particular, the board stated that PROCAPTAN and PROCAPS had the first six letters in common. In addition, the first syllables of the marks were identical and the second syllables were similar.
Arguably, the board’s analysis was unfounded and lacked precision. The prefix ‘pro’ is an abbreviation that is commonly used in connection with professionals or goods aimed at professionals. Therefore, one may argue that the dominant elements of the marks were ‘captan’ and ‘caps’. ‘Caps’ is commonly used to designate pharmaceuticals in a capsule shape. On the other hand, ‘captan’ has no specific meaning but could evoke the term ‘captor’, which would differentiate the marks from a conceptual point of view. As a result, the marks should be considered to be dissimilar.
It would not be surprising if Procaps were to appeal to the CFI. However, the decision shows that as far as pharmaceuticals are concerned, trademark searches for opposition purposes should be carried out not only for goods and services in Classes 5, 10, 35, 42 and 44, but also for services in Classes 39 and 40.      
Franck Soutoul and Jean-Philippe Bresson, Inlex IP Expertise, Paris

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