Pharmaceutical marks held to be dissimilar in controversial decision

European Union
In Pierre Fabre Médicament SA v Bastos Viegas SA (Opposition B 592 909, April 28 2010), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that the marks OPDREXNW and OPTREX for goods in Class 5 of the Nice Classification were dissimilar.  
On October 26 2001 French company Pierre Fabre Médicament SA filed an application for the registration of the device mark OPDREXNW as a Community trademark for goods and services in Classes 5, 10 and 35. Portuguese company Bastos Viegas SA lodged an opposition against the application on the grounds that there was a likelihood of confusion with its earlier French mark OPTREX for goods in Class 5.
Pierre Fabre requested that Bastos provide evidence of use of its mark in respect of the goods for which it was registered. Bastos demonstrated use of the mark for an eye-wash solution and, therefore, OHIM took that product into account during the opposition proceedings.
First, the Opposition Division found that there was a certain degree of similarity between the eye-wash solution and the “surgical tissues; gauze for dressings; medical bandages; articles for dressings; wadding for medical purposes, except preparations for the treatment of eyes” covered by the mark applied for. However, the Opposition Division held that the goods covered by the earlier mark in Class 5 and the goods and services covered by the mark applied for in Classes 10 and 35 were dissimilar.
The Opposition Division then turned to the comparison of the marks and concluded that they were dissimilar. From a visual point of view, the Opposition Division considered that there was a low degree of similarity between the marks. The Opposition Division held that the mark applied for contained graphic elements which had no equivalent in the earlier mark, pointing out that it was divided into various segments thanks to the use of different colours.
From a phonetic point of view, the Opposition Division held that there was a medium degree of similarity between the marks. The Opposition Division found that OPDREXNW and OPTREX coincided in their first syllable, and that the elements 'trex' and 'drex' produced similar sounds. However, the addition of the letters 'NW' in the mark applied for had an impact that could not be ignored. As neither of the marks had any meaning, the Opposition Division did not carry out a conceptual comparison.
Finally, turning to the global assessment of the marks, the Opposition Division stated that the visual and aural differences outweighed the low level of visual similarity and the medium level of phonetic similarity between the marks. Consequently, there was no risk of confusion between OPDREXNW and OPTREX.
The opposition was thus rejected.
This outcome was unexpected. The Opposition Division admitted that all the goods covered by the marks in Class 5 were pharmaceuticals, but pointed out that they had different medical purposes and were thus dissimilar. The usual approach of OHIM is to disregard the differences between the therapeutic effects of the goods and focus on their general purpose (ie, the preservation and improvement of health). 
However, the decision was even more surprising with regard to the comparison of the marks. OHIM should have taken into account the fact that the element 'opdrex' in the mark applied for appeared on a white background and was separated from the letters 'NW', which appeared on a black background.
Arguably, the decision is clearly wrong and contradicts the principles set forth by the European Court of Justice in Canon (Case C-39/97).
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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