OHIM decision upheld despite delay in dealing with proof of use request

European Union
In Kureha Corp v Office for Harmonization in the Internal Market (OHIM) (Case T-487/08, June 16 2010), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the trademarks KREMEZIN and KRENOSIN.

On October 22 2002 Japanese company Kureha Corp submitted an application for the registration as a Community trademark of the word mark KREMEZIN for pharmaceutical preparations. Kureha has been present in the pharmaceutical field since 1977. It has developed and manufactured Kremezin as a therapeutic agent for chronic kidney disease.

Sanofi-Aventis SA manufactures a pharmaceutical product called Krenosin as a medicine for the treatment of heart disease. On December 19 2003 Sanofi opposed the application for the registration of KREMEZIN based on its earlier international registration for the word mark KRENOSIN, which was registered on June 29 1990 and covered Italy, among other countries.

After a lengthy opposition procedure, the Opposition Division of OHIM upheld the opposition and rejected the application for the registration of KREMEZIN. In support of its conclusion, the Opposition Division considered that the attentiveness of the relevant public was normal (as opposed to high) and that both the marks and the goods in question were similar.

The Fourth Board of Appeal of OHIM rejected Kureha's appeal, finding that the notice of opposition was admissible and that Sanofi had sufficiently proved the existence of its earlier right. Further, the board considered that there was likelihood of confusion between the marks in Italy due to the high degree of similarity between the goods and the medium degree of similarity between the marks. Kureha appealed to the General Court.

The court upheld the board's decision, although it found that the pharmaceutical products at issue were not highly similar, but merely similar. In addition, the court considered that the relevant public would display an above-average level of attentiveness. However, these findings were insufficient to exclude a likelihood of confusion between the marks. According to the court, there was a high level of visual and phonetic similarity between the marks and, overall, the marks were highly similar.

Further, the court explicitly referred to the fact that the relevant public in this case was the Italian public. The fact that the Italian pronunciation of the first and last syllable of each word was virtually identical outweighed the fact that the second syllable was pronounced differently. The court also pointed out that neither the earlier mark nor the mark applied for had a particular meaning for the Italian public.

Finally, the court considered whether the board's decision could be annulled based on the late submission of proof of existence of the earlier mark by Sanofi. According to Kureha, Sanofi had failed to prove the existence of its earlier right before November 30 2005, the mandatory time limit imposed by OHIM under Rule 19(2) of the Community Trademark Implementation Regulation (2868/95). Moreover, Kureha argued that the Opposition Division was not permitted to take into account the additional evidence provided on June 20 2007, as it had informed the parties on December 13 2006 that they could not submit any further observations.

The General Court ruled that, although there was a regrettable delay in dealing with Kureha's request that Sanofi furnish proof of use of the earlier mark, the board's decision could not be annulled for this reason, since it was only on June 4 2007 that the Opposition Division expressly invited Sanofi to provide it with proof of existence of the earlier mark. The action was thus dismissed.

Maria Pereira, Allen & Overy LLP, Amsterdam

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