OHIM unimpressed by limitation of goods in VETPHARMA Case

European Union
In Vetpharma Animal Health SL v Sanofi-Aventis (Case R 1711/2007-5, February 16 2009), the Fifth Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has held that “pharmaceutical, veterinary and dietetic preparations adapted for medical use, with the exception of pharmaceutical preparations for the treatment of cancer” were similar to “pharmaceutical products for treating cancer”.
Spanish company Vetpharma Animal Health SL sought to register VETPHARMA as a Community trademark for goods and services in Classes 1, 5 and 42 of the Nice Classification. Sanofi-Aventis lodged an opposition based on its French and international registrations for the trademark VEPRAMA for “pharmaceutical products for treating cancer” in Class 5. In the context of its reply to the opposition, Vetpharma limited its application with regard to Class 5 goods to “pharmaceutical, veterinary and dietetic preparations adapted for medical use, with the exception of pharmaceutical preparations for the treatment of cancer”.  The Opposition Division of OHIM ruled that the Class 5 goods covered by the mark applied for were similar to those covered by the earlier mark regardless of whether they were intended for the treatment of anything other than cancer, as they had the same nature, purpose and distribution channels.  
On appeal, Vetpharma argued that:
  • the marks covered different kinds of pharmaceutical preparations; and
  • only highly specialized physicians and pharmacists deal with cancer drugs, while the end consumer has no direct access to them.  
The Board of Appeal considered that in limiting the scope of its goods in Class 5 during the proceedings, Vetpharma had intended to take out the similarity between its goods and those covered by the earlier mark. However, the board found that the limitation did not have the consequence of defining a specific type of products, and pointed out that a negative description does not affect the products themselves. The board concluded that the limitation did not result in a modification of the market in which the products at issue were to be found, as the goods covered by the mark applied for did not constitute a subcategory separate from the general category of pharmaceutical products.
The decision should be taken into account in the development of trademark strategies for two main reasons. First, it shows that specifically excluding certain goods from the application in opposition proceedings will rarely be successful. However, this does not mean that applicants should avoid limiting the specification of the goods in all cases - such a limitation may prove to be an important negotiation tool in the context of coexistence agreements or letters of consent. Second, the decision raises the chances of success in opposition or cancellation proceedings against a later mark.
The position of the Board of Appeal is not limited to pharmaceutical products and seems to mirror that of the Court of First Instance (CFI). For example, in Tsakiris-Mallas v OHIM, the CFI considered that “clothing, excepting shoes” and “shoes for men and women” were similar (for further details please see "EXÉ found similar to EXE despite restriction of goods").
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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