Pharmaceuticals and cosmetics are similar, says OHIM

European Union
In Apotex Inc v Schill (Case B 1 211 176, January 15 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that pharmaceuticals and cosmetics were similar in a dispute involving the trademarks APO and APOMEA.
In 2006 Michael Schill, a German national, filed an application for the registration of APOMEA as a Community trademark for goods and services in Classes 3, 5, 10, 16, 18, 25, 30, 39, 41 and 44 of the Nice Classification. Canadian company Apotex Inc lodged an opposition based on its two earlier Portuguese registrations for the trademark APO for goods in Classes 5 and 10, respectively.
With regard to goods in Class 3, the APOMEA mark covered:
“cosmetics included in Class 3, in particular face creams, oils, baby oils, powder, shampoo, bath additives, soaps, cosmetic skin care preparations, sunscreen, dentifrices, essential oils, perfumery, wellness products.”
The earlier trademark covered the following goods in Class 5:
“pharmaceutical products, including psychotherapeutics; diuretics, anti-arthritics and anti-inflammatory agents, corticosteroids, hypoglycemic, anti-infective, anti-hypertensive, xanthine oxidase inhibitors and beta-adrenergic blocking agents.” 
The presence in both specifications of the words 'included' and 'including' led the OHIM to rule that the goods listed were only examples of a broader category of products. Based on this approach, the Opposition Division considered that both specifications could include specific pharmaceuticals and cosmetics that are similar. According to the Opposition Division, such products could take the same form (ie, creams or lotions) and have the same method of use (application to the skin and/or treatment of medical conditions of the skin or of the hair).
Until now, the approach of the OHIM was to consider that pharmaceuticals and cosmetics satisfied different needs and targeted different consumers. Pharmaceuticals and cosmetics were commonly deemed not to be in competition with each other or marketed in the same way (eg, see the Opposition Division's decision of January 28 2008 (Case B 896 029)). A  few, limited attempts had been made to find similarity between Class 3 and Class 5 goods, but only in respect of Class 5 goods other than pharmaceuticals (eg, see the Court of First Instance's decision in Jabones Pardo (Case T-278/04), in which it was held that hygienic products and perfumes were similar).
In the present case, the number of criteria taken into account by the Opposition Division to find similarity between the goods seems quite limited. The Opposition Division considered only the form and the method of use of the goods, without mentioning the distribution networks of the products or the different needs that they satisfy.
In light of recent developments in EU case law, one may conclude that trademark searches, watches and oppositions connected to pharmaceuticals will be properly conducted only if they cover goods and services in Classes 3, 5, 10, 35, 39, 40, 42 and 44.
Franck Soutoul and Jean-Philippe Bresson, Inlex IP Expertise, Paris

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