Purely figurative trademarks for pharmaceuticals held to be dissimilar

In Sanofi Pasteur MSD SNC v Office for Harmonisation in the Internal Market (OHIM) (Case T‑502/11, May 17 2013), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between two figurative trademarks covering identical products in Class 5 of the Nice Classification.

On June 13 2006 Mundipharma AG applied to register the following device as a Community trademark in respect of “pharmaceutical products for human medicine, namely analgesics” in Class 5:

On May 3 2007 French company Sanofi Pasteur MSD filed an opposition based on the following earlier French and international device marks for “pharmaceutical products” in Class 5:

On July 30 2010 the Opposition Division of OHIM rejected the opposition. On July 22 2011 the Fourth Board of Appeal of OHIM dismissed the appeal on the grounds that:

• the visual impression created by the marks was dissimilar; and
• the earlier marks enjoyed a limited degree of protection due to:
  • the simplicity of the geometric shapes at issue; and
  • Sanofi’s failure to demonstrate that the weak distinctive character of its marks had been increased through use or by the reputation of the marks.

On appeal, the General Court confirmed that there was no likelihood of confusion between the marks.

The court first considered that Sanofi had merely stated in an abstract manner that the “high distinctiveness” of its marks should be taken into account, without indicating whether such distinctiveness had been “increased through use”, “increased by the reputation” of the marks, or resulted only from the inherent distinctiveness of the marks for the products involved.

The court also disagreed with Sanofi’s assertion that the relevant public would have a low level of attention with regard to device marks. The court noted that the relevant public, which was composed of health professionals and patients, had a high degree of attention.

Finally, the court confirmed that the visual impression of the marks was different, because:

• the contested trademark consisted of thick sickles with sharp ends, while the earlier marks consisted of thin ribbons that were cut to fit into a rectangular frame;
• the graphic elements of the earlier marks created the impression of a harmonious and fluid shape, while those of the contested mark produced chunkier and heavier forms; and
• the ribbons of the earlier marks unfold lengthways, while the shape of the mark applied for was almost equal in length and height.

Given the graphic nature of the marks and the absence of any conceptual content, no aural and conceptual comparison was carried out.

This decision is instructive on various levels. First, it shows the difficulties in successfully enforcing trademark rights in signs of a purely graphic nature - especially in light of the fact that the products at issue in this case were identical. Second, the decision highlights the importance of the extent and content of the arguments, as well as the choice of words, when it comes to raising the issue of the “high distinctiveness” of a mark on appeal. Without specific arguments, the chances of being successful in opposition proceedings involving graphic marks are slim to none, at least at the Community level.

Jean-Philippe Bresson and Franck Soutoul, INLEX IP EXPERTISE, Paris