Pharmaceutical marks held to be confusingly similar in debatable decision

European Union
In Pfizer Health AB v Isdin SA (Opposition B 1 359 886, April 27 2010), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has ruled that the marks KALFATAN and XALATAN were confusingly similar.  
On April 4 2008 Spanish company Isdin SA applied for the registration of the word mark KALFATAN as a Community trademark (CTM) for goods in Classes 3 and 5 of the Nice Classification. Swedish company Pfizer Health AB opposed the registration of the mark in Class 5 on the basis of its earlier CTM XALATAN, which is registered for goods in Class 5. The Opposition Division concluded that there was a likelihood of confusion between the marks. 
With regard to the comparison of the goods, the Opposition Division had no difficulty finding that the “pharmaceutical preparations for the treatment of glaucoma”covered by the earlier mark and the “pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use” covered by the mark applied for were identical or similar.
Turning to the comparison of the marks, the Opposition Division held that there was a medium degree of similarity between KALFATAN and XALATAN. Visually, the Opposition Division stated that the marks coincided in the second and third letters ('A' and 'L') and in the last four letters ('A', 'T', 'A' and 'N'). Moreover, they differed only in that the earlier mark begins with 'X' and the mark applied for begins with 'K', and in the fourth letter 'F'.  
Aurally, the Opposition Division stated that the marks both consisted of three syllables, of which the last syllable (‘tan’) and the last part of the second syllable were identical. The marks also had the same vowels in each syllable.  
With regard to the global assessment, the Opposition Division paid great attention to the fact that the goods at issue were identical or similar. It stated that some of the products covered by the KALFATAN mark aimed to treat serious diseases, while other goods targeted milder disorders that do not necessarily require a prescription. The Opposition Division pointed out that OHIM practice is to presume that consumers have a normal degree of attention, regardless of whether either of the marks cover non-prescription drugs.     
The Opposition Division thus specifically dealt with the identity or similarity of the goods in its global assessment, but did not make any additional comments on the similarity of the marks. Moreover, as some of the pharmaceutical products at issue treat serious diseases, the degree of attention presumed by the Opposition Division is debatable. In previous cases, the Community authorities have presumed that consumers have a higher level of attention, regardless of the therapeutic purpose of the goods. In other cases, the authorities have found that there was a higher level of attention when at least one of the goods aimed to treat a serious pathology. Had the Opposition Division followed a similar approach in the present case, it might have reached a different conclusion.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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