Pharmaceuticals and food supplements are similar, says OHIM

European Union
In Laboratorios Azevedos-Industria Farmaceutica SA v Orchid Healthcare Ltd (Opposition B 1 304 643, April 17 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that pharmaceuticals and food supplements are similar.
British company Orchid Healthcare Ltd sought to register ISOPRO as a Community trademark for “dietetic substances adapted for pharmaceutical use, food supplements and food supplements containing soy isoflavonoids” in Class 5. Portuguese company Laboratorios Azevedos-Industria Farmaceutica opposed the application based on a Portuguese registration for the trademark ISOPROTIL for “preparations destined to pharmaceutical preparations, chemical-pharmaceutical preparations, pharmaceutical preparations and medicaments for humans and animals” in Class 5.  The Opposition Division held that the marks were highly similar, but the interest of the decision lies in the comparison of the products involved.
According to the Opposition Division, food supplements and food supplements containing soy isoflavonoids are preparations intended to supply nutrients such as vitamins, minerals, fatty acids or amino acids that are missing or not consumed in sufficient quantity in a person’s diet. Although there was no explicit precision that these products had been adapted for pharmaceutical use, the Opposition Division found that the mere fact that they were classified in Class 5 led to the conclusion that these supplements were similar to the goods covered the earlier mark, pointing out that Class 5 is mainly devoted to medical substances.  
The reasoning of the Opposition Division is surprising, as the analysis is focused only on the fact that the goods fell within the same class, even though it is established practice that this cannot be regarded as the exclusive criterion for assessing the similarity of goods. The Opposition Division completely disregarded the nature, purpose, function, destination, origin and distribution networks of the goods involved. 
Nonetheless, the Opposition Division appears to be taking this approach regularly. On May 22 2009, in a case involving the trademarks NULCEX and NUFLEX, the Opposition Division held that “pharmaceutical products” and “nutritional supplements” were similar on the grounds that they both fell within Class 5.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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