PNEUMO UPDATE is confusingly similar to PNEUMO, says CFI

In Altana Pharma AG v Office for Harmonization in the Internal Market (OHIM) (Case T-327/06), the Court of First Instance (CFI) has upheld a decision to refuse the registration of PNEUMO UPDATE as a Community trademark on the grounds that there was a likelihood of confusion with the earlier German trademark PNEUMO.

On November 14 2001 Altana Pharma AG filed an application to register PNEUMO UPDATE as a Community trademark for goods in Class 5 of the Nice Classification ("medicines and preparations for medical diagnostics"). Avensa AG opposed the application based on the earlier word mark PNEUMO, which is registered in Germany for goods in Class 5 ("pharmaceutical products, in particular human medicines"). The Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between the marks PNEUMO UPDATE and PNEUMO. Altana appealed to the CFI.

Among other things, Altana argued that:

• the earlier trademark PNEUMO is descriptive and devoid of any distinctive character; and
  
  
• the additional element 'update' in the PNEUMO UPDATE mark is distinctive, since this term is used in Germany exclusively in the field of information technology to describe the updated version of software.

The CFI dismissed the first argument on the grounds that OHIM has no discretion to determine whether a national trademark is valid.

With regard to Altana's second argument, the CFI upheld OHIM's finding that the word 'update' is descriptive. According to the CFI, the consumers will understand the mark PNEUMO UPDATE as describing an updated version of products sold under the mark PNEUMO. Therefore, consumers were likely to be misled as to the origin of the goods.

The CFI thus found that the Opposition Division had correctly refused to register PNEUMO UPDATE as a Community trademark.

Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna