RESPICORT opposition smothers RESPICUR application

The European Court of First Instance (CFI) has issued a decision clarifying the aproach to assessing the scope of a trademark.

Altana Pharma AG, the German holder of the national word mark RESPICORT for "pharmaceutical and sanitary preparations, and plasters" in Class 5 of the Nice Classification opposed an application by Mundipharma AG to register RESPICUR as a Community trademark for "therapeutic preparations for respiratory illnesses" in the same class. The Opposition Division of the Office for Harmonization in the Internal Market (OHIM) rejected the opposition.

On appeal, the Board of Appeal found that Altana had failed to prove use of the earlier RESPICORT mark to the requisite degree and, therefore, only the use in relation to the narrow and specific sub-category of "multi-dose dry powder inhalers containing corticoids, available only on prescription" should be taken into account. In considering a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation, the board held that the goods to which the marks applied were identical, but the degree of similarity was counterbalanced by differences in the third syllable of each sign. As the relevant public for the purposes of assessing confusion were health professionals, this would also inform the overall decision, and the board concluded that RESPICORT and RESPICUR were unlikely to cause confusion.

In submissions to the CFI, Altana relied upon the argument that the board had misapplied Article 8(1)(b) in finding that there was no likelihood of confusion between the marks.

The CFI annulled the board's decision and found for Altana, holding in particular that the board had erred in taking only the earlier mark into consideration

"in so far as it covered goods the genuine use of which was not contested. It thus defined a sub-category corresponding to those goods, namely 'multi-dose dry powder inhalers containing corticoids, available only on prescription'"

as that interpretation

"is incompatible with Article 43(2) of [the Commmunity Trademark Regulation], as interpreted in the light of ALADIN, and applicable to earlier national marks pursuant to Article 43(3) of that regulation".

According to ALADIN, issues such as active ingredient, dosage and availability on prescription would be inappropriate for defining a sub-category of goods, as a medical condition can be treated in a number of ways using variable dosages and active ingredients (see ALADIN opposition wish granted by Court of First Instance). The CFI also had to reject Mundipharma's designation of the appropriate sub-category as being 'glucocorticoids' as accepting it would effectively classify goods based upon their active ingredient, and not their ultimate purpose and intended use.

The CFI expanded the definition of the 'relevant public' to include German patients suffering from a respiratory illness, who would be reasonably well-informed and circumspect. The CFI added that when choosing medicinal goods, consumers looked for a product which would meet their specific needs and the intended use of the product would be vital in dictating their choice of product. 'Purpose' and 'intended use' are therefore fundamental considerations when defining a sub-category. In neglecting to refer to this criterion in the definition of the goods, the board had reached a mistaken conclusion. The correct sub-category must be drawn more widely, as presented by Altana, as "therapeutic preparations for respiratory illnesses".

While the medical professionals among the relevant public may understand the suffix 'cur' as relating to 'cure' and 'cort' as relating to 'corticoids', the CFI held that for the remainder of the relevant public - the patients - there was a likelihood of confusion between the marks, particularly as the original RESPICORT mark was particularly distinctive. Accordingly, it held the marks at issue to be confusingly similar and annulled the decision of the board.

Jeremy Dickerson, Burges Salmon, Bristol