Pharmaceutical marks with same prefix held to be confusingly similar

European Union
In Procaps SA v Office for Harmonization in the Internal Market (OHIM) (Case T-35/09, June 2 2010), the General Court has upheld Biofarma SAS’s opposition to the registration of the word mark PROCAPS as a Community trademark for goods and services in Classes 5, 35, 39, 40 and 44 of the Nice Classification.

The opposition was based on Biofarma’s ownership of the word mark PROCAPTAN, which was registered as a national trademark in Italy, and as an international mark covering Italy for goods in Class 5. The Board of Appeal of OHIM agreed that certain of the goods and services covered by the mark applied for were identical, or similar to, the goods covered by the earlier marks, and upheld the opposition in part. The applicant, Procaps SA, subsequently appealed to the General Court on the grounds that the board’s decision breached Article 8(1)(b) of the Community Trademark Regulation (40/94).

Before analyzing the decision of the board, the General Court reminded the parties of the proviso that a mark may not be registered if:
  • it is similar to an earlier registered trademark;
  • it is to be registered for goods or services which are identical, or similar to, those for which the earlier mark is protected; and
  • there is a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected.
First, the court rejected Procaps’ assertion that the relevant public consisted of doctors who prescribed the products at issue and had special knowledge of both marks. It considered that, while health professionals would be included within the definition, the relevant public was in fact the average Italian consumer who would be reasonably well informed, reasonably attentive and circumspect. In support of its conclusion, the court relied on established case law, under which the choice of prescription medicines, although influenced by a doctor, does not in itself exclude all likelihood of confusion for the end user so far as the origin of the goods is concerned.

With regard to the comparison of the goods and services, the court did not accept Procaps’ argument that the board had failed to compare the goods and services, but had instead compared the businesses of the parties, both of which operated in the pharmaceuticals sector. In support of this, the court pointed out specific paragraphs of the board’s decision in which it had considered, class by class, the similarities between the goods and services. The court noted that the reason why the board felt that the goods and services were similar was because there was a close link between them, such that consumers might believe that the production of the goods, or the supply of the services, was carried out by the same business.

The court also accepted the board’s interpretation that “medicines contained in a soft gelatine capsule” in Class 5 (which were covered by the application) would easily fall within the definition of 'pharmaceutical products' covered by the earlier mark. Procaps also argued that any decision not to allow registration of a mark with the prefix 'proca' would amount to a prohibition on marks including the same letters being registered, which would ultimately restrict the number of combinations of letters available. Again, the court rejected this argument, highlighting that registration will be refused only if:
  • there was, or might be, consumer confusion; and
  • there were similarities between the marks and the goods and services.
The court then moved on to the global analysis of the marks, focusing on the dominant element and the visual, phonetic and conceptual similarities between the marks. At times it disagreed with the board’s treatment of particular concepts, but this did not affect its ultimate decision.

In particular, the court disagreed with the board on the issue of the dominant element. The board had considered that, since the marks consisted of only one word, there could be no dominant element. However, the court cited case law indicating that a word mark might contain a dominant suffix or syllable.

The court also differed in its treatment of the conceptual aspects of the marks. The board had considered that, since the marks were ‘invented’ words, there was no conceptual aspect. Yet, the court considered that PROCAPS could operate as a meaningful word for the relevant public, in relation to capsules and numerous pharmaceutical products. Therefore, it was not devoid of meaning. However, it concluded that the conceptual part of the earlier marks was not sufficiently clear to offset the visual and phonetic similarities. Visually, the court pointed out that the six first letters of the marks were in the same order, and that the mark applied for, save for the ‘S’, was contained within each of the earlier marks. Phonetically, the court noted that the first syllables of the marks were identical and that the second syllables were pronounced in a similar way, the ‘S’ being inaudible.

The court did not agree that the board had failed to consider the marks as a whole by looking only at the letters and syllables. It confirmed the usual approach for the assessment a word mark - that is, the visual analysis involves consideration of the length, the letters and the order of those letters, while the phonetic analysis involves consideration of the pronunciation, as well as the number and order of syllables.

The court also relied on the principle that a lesser degree of similarity between the goods or services may be counteracted by a greater degree of similarity between the marks. It disregarded Procaps’ somewhat persuasive argument that national and international registrations for the same marks co-existed without confusion.

All the component parts of Article 8(1)(b) being satisfied, the court was forced to reject Procaps’ appeal.

The decision shows the tendency of the General Court to take a wide view of whether goods or services might be similar, which was somewhat surprising in the present case, considering that identical registered marks had sat side by side for over 20 years. The court’s reasoning is comparable to that in:
  • BALMORAL trademark ([1999] RPC 297), in which wines were held to be similar to whisky and bar services, since people would think that the supplier of one was engaged in the supply of the other; and
  • BEAUTY FREE SHOP trademark ([1999] ETMR 20), in which solarium services were held to be similar to beauty preparations, perfumery, cosmetics and dietetic substances, since the services covered by the conflicting marks could be offered together and were intended for the same public.
Applications where the specification is focused and narrow are more likely to be registered, so applicants should be prepared to limit their applications, rather than take a ‘sweeper’ approach.

Ellen Forrest-Charde and Chris McLeod, Hammonds LLP, London

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