OHIM criticised for conducting additional research to reach decision

European Union
In Ineos Healthcare Limited v Office for Harmonisation in the Internal Market (OHIM) (Case T-222/09, February 9 2011), the General Court has partly overturned a decision of the Second Board of Appeal of OHIM relating to an opposition to Ineos Healthcare Limited’s application for ALPHAREN.

The application was filed in March 2005 for a range of goods in Class 5 of the Nice Classification, namely:

Pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds; pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments; phosphate binders for use in the treatment of hyperphosphataemia.”

On publication in December 2005, Teva Pharmaceutical Industries Limited opposed the application under Article 8(1)(b) of the Community Trademark Regulation (40/94) on the basis of earlier Hungarian, Latvian and Lithuanian registrations for the mark ALPHA D3 covering pharmaceutical preparations for regulating calcium. The Opposition Division of OHIM upheld the decision in its entirety on the basis of the Hungarian registration.

Ineos appealed and, in March 2009, the Second Board of Appeal dismissed the appeal. Interestingly, it held that the Hungarian registration could not be taken into consideration because of the opponent’s failure to file a translation of the registration certificate into English, but exercised its discretion and examined the other registrations which covered identical goods. It concluded that the identical and similar goods outweighed the lower degree of similarity between the marks and, therefore, there was a likelihood of confusion on the part of the average consumer.

Ineos’ appeal to the General Court was based on four pleas:
  • the opponent had not submitted sufficient evidence of the similarity between the respective goods;
  • the board had based its decision on internet evidence relating to the similarity between the goods, on which Ineos had not had the opportunity to comment;
  • the board had not restricted itself to examining the facts, evidence and arguments of the parties and the relief sought, by carrying out internet research of its own motion; and
  • the board had incorrectly identified the relevant public as the average consumer.
The court started by considering the first plea and, unsurprisingly, ruled that there is no obligation on the opponent to file evidence of the similarity of goods. Therefore, it rejected this plea.

It then considered the second and third pleas together, because they both related to the board’s research to establish similarities between the goods. It agreed that the board’s use of this research should be rejected in relation to “pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds” and “phosphate binders for use in the treatment of hyperphosphataemia”, namely the goods in relation to which it had used this research, but not in relation to the remaining goods covered by the application. It ruled that without this research, the board would have reached substantially different conclusions in this regard.

The court held that it did not need to rule on the second plea, in view of this ruling in relation to the third plea.

In relation to the fourth plea, the court ruled that the board had correctly defined the relevant public as comprising both professionals and average consumers, despite the goods being prescription-only products, because average consumers would still encounter the products bearing the marks. It thus rejected this plea.

In conclusion, the court annulled the board’s decision in relation to “pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds” and “phosphate binders for use in the treatment of hyperphosphataemia”, and upheld it in relation to “pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments”. It ordered OHIM to pay its own costs and half of those of Ineos, with Ineos ordered to bear the other half.

It is perhaps difficult to gain much insight into this ruling without a specialist knowledge of the goods in question. Internet research indicates that the ALPHAREN mark relates to a phosphate binder consisting of iron magnesium hydroxy carbonate developed for the control of phosphate in haemodialysis patients, and that ALPHA D3 relates to a vitamin D-based product for use in haemodialysis. However, the principle that the boards of appeal should not arrive at decisions on the basis of additional research to which the parties were not privy is potentially useful, as are the court’s comments on the nature of the relevant public.
 
Chris McLeod, Squire, Sanders & Dempsey (UK) LLP, London

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