Relevant public for pharmaceuticals clarified

The European Court of Justice (ECJ) has dismissed an appeal by Alcon Inc against a decision to uphold an opposition against the registration of its TRAVATAN mark for "ophthalmic pharmaceutical products" in Class 5 of the Nice Classification.

The opposition was filed by Biofarma SA based on its Italian trademark TRIVASTAN registered for, among other things, pharmaceutical preparations in Class 5. The Office for Harmonization in the Internal Market's (OHIM) Opposition Division concluded that there was a likelihood of confusion between the signs. It stated that Biofarma had successfully proved that it had used the earlier national mark in respect of a peripheral vasodilator intended to treat peripheral and cerebral vascular disturbance and vascular disorders of the eye and ear. This product was regarded as similar to the products of the contested application.

The Third Board of Appeal and the Court of First Instance (CFI) further confirmed the visual and phonetic similarity of the signs together with the similarity of the products. Alcon appealed, arguing that the CFI should have considered the relevant public as being composed of doctors and pharmacists only and should not have included end users for assessing the likelihood of confusion.

The ECJ dismissed the appeal. It reasoned that the relevant public is composed of healthcare professionals but also of end users because the delivery of pharmaceuticals by professionals does not eliminate all possible confusion to end users. The prior intervention of healthcare professionals was counterbalanced with the marketing process for these types of pharmaceutical products considering that this process was aimed at attracting the end user to acquire said products.

The position of the ECJ clarifies what has up until now been conflicting EU case law on the composition of the relevant public when assessing similarity between pharmaceutical marks. Certain decisions focused only on a public composed of doctors and pharmacists (DAFLON/CAFON or AMAXA/ALMA for instance) whereas others also took end users into consideration (ALREX/ARTEX or RESPICORT/RESPICUR). The ECJ's decision to include end users in assessments on confusing similarity of marks for pharmaceuticals hopefully gives prevalence to the health of end users over the safeguarding of distribution networks.

The ECJ went beyond the conclusions of the advocate general who made a distinction between pharmaceuticals available on prescription (for which only healthcare professionals were of relevance) and pharmaceuticals available over the counter (which would include end users).

While it included end users in the relevant public, the ECJ did not however mention what level of care should be attributed to such end users. Previous decisions which have regarded end users as being part of the relevant public also maintained a high level of care given the particular nature of the products at issue (PERACILLIN/PIPERACILLIN for instance). It is likely that this level of care is applicable following the ECJ's ruling in Alcon.

Franck Soutoul and Jean-Philippe Bresson, Inlex Conseil, Paris