Similarities between goods in Classes 3 and 5 highlighted

European Union
In González v Ipsen Pharma SAS (Case B 965 949, September 30 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has upheld an opposition against the registration of the mark NEODYS for certain goods in Classes 3 and 5 of the Nice Classification.
In 2004 French Company Ipsen Pharma SAS filed an application for the registration of NEODYS as a Community trademark for goods in Classes 3 (including "perfumery, essential oils, cosmetics, hair lotions") and 5 (including "pharmaceutical preparations"). Blanca Maceda González, an individual residing in Spain, opposed the application based on an earlier Spanish registration for the trademark NEO DYL for goods in Class 3 ("bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices").
As a defence, Ipsen Pharma requested that the opponent provide proof of use of its mark. In assessing the evidence provided by the opponent, the Opposition Division carried out a detailed examination of the conditions of genuine use of a mark.
First, the Opposition Division pointed out that use of the NEO DYL mark had been made by Spanish Company Van Ruux Iberica, and not by the opponent. The Opposition Division nevertheless considered that the evidence filed by the opponent was an implicit indication that use had been made with her consent. The Opposition Division concluded that use of the mark with the consent of the opponent was equivalent to use by the opponent herself.
Second, the Opposition Division held that the evidence submitted by the opponent was sufficient with regard to the place, time, nature and extent of use of the mark, but only as far as "hair lotions" were concerned. Consequently, the opposition was examined only in relation to those goods.
In comparing the goods covered by the mark applied for with "hair lotions", the Opposition Division stated that preparations for personal hygiene and body care products were similar. However, there was no similarity between "injectable cosmetic preparations; preparations for use in cosmetic surgery", "dentifrices" and "bleaching preparations" on the one hand, and "hair lotions" on the other.
More surprisingly, the Opposition Division considered that there was a link between "hair lotions" and "pharmaceutical preparations for the treatment of disorders relating to age; pharmaceutical preparations for cosmetic purposes", but not between "hair lotions" and "pharmaceutical preparations for the treatment of muscular disorders; pharmaceutical preparations for the treatment of frown lines and facial wrinkles”.
Turning to the comparison of the marks, the Opposition Division considered that they were highly similar from a visual, phonetic and conceptual point of view. The Opposition Division thus upheld the opposition for some of the goods in Classes 3 and 5.
The decision shows that OHIM will apply strict criteria in establishing use of a mark. Moreover, the following trends may be of interest for professionals in the cosmetic and pharmaceutical fields:
  • When comparing goods in Class 5, OHIM will not take into consideration the specification of the goods: for example, "pharmaceuticals" and "pharmaceuticals for the treatment of psoriasis" would be considered to be similar.
  • When comparing goods in Classes 3 and 5, a broad list of goods in Class 5 may be found to be similar to goods in Class 3. For example, in the present case, "pharmaceuticals" were found to be similar to "hair lotions".
  • Specifying goods in Class 5 (eg, "pharmaceutical for the treatment of ...") may be a good way of avoiding confusion with goods in Class 3.
Jean-Philippe Bresson and Séverine Fitoussi, INLEX IP EXPERTISE, Paris

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