TRUBION held to be confusingly similar to TRIBION HARMONIS

European Union
In Trubion Pharmaceuticals Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-412/08, December 15 2009), the General Court has dismissed an appeal filed by Trubion Pharmaceuticals Inc against a decision of the Board of Appeal of OHIM in which the latter had refused to register the mark TRUBION for goods in Class 5 of the Nice Classification.
On February 24 2004 Trubion filed an application for the registration of the word mark TRUBION as a Community trademark (CTM) for the following goods and services:
  • Class 5 - "pharmaceutical preparations, pharmaceutical preparations for use in the fields of immunology and oncology"; and
  • Class 42 - "pharmaceutical drug development services".
On March 11 2005 Merck KGaA filed a notice of opposition under Article 42 of the Community Trademark Regulation (40/94) based on two earlier marks:
  • the word CTM BION for goods and services in Classes 3, 5, 29 and 30; and
  • the figurative and word CTM TRIBION HARMONIS for goods and services in Classes 5 ("diet products for medical use"), 29 ("diet preparations for non-medical use, made with proteins") and 30 ("diet preparation for non-medical use, made with carbohydrates").
On September 10 2007 the Opposition Division of OHIM rejected the opposition based on the BION mark, considering that the signs at issue were not similar. Moreover, the Opposition Division partially upheld the opposition based on the TRIBION HARMONIS mark for goods for Class 5, but rejected the opposition in respect of the services in Class 42. Trubion appealed.
On July 3 2008 the Board of Appeal of OHIM dismissed Trubion's appeal, holding that:
  • the goods in question were similar, since they shared the same channels of trade and had the same or complementary purposes; and
  • the marks TRUBION and TRIBION HARMONIS were similar, as ‘tribion’ was the dominant element in the earlier mark.
In assessing the similarity of the marks, the board did not take into account:
  • the word 'harmonis', as it evoked the concept of 'harmony', which is a characteristic of the goods covered by the earlier mark; and 
  • the figurative element of the earlier mark, which was held to be purely decorative.
The board thus concluded that there was a likelihood of confusion between TRUBION and TRIBION HARMONIS.
Trubion appealed to the General Court. One day before filing the appeal, Trubion restricted the list of goods in Class 5 as follows: "Pharmaceutical preparations for the treatment of cancer, inflammatory diseases and autoimmune diseases".
Taking into account the arguments of the parties, the General Court upheld the board's decision based on the following findings:
  • Restriction of the goods - the restriction could not be taken into account by the court since it would alter the factual context presented before the board, contrary to Article 135(4) of the Rules of Procedure of the Court.
  • Relevant public - according to the court, it was composed of both end consumers and health professionals, who, given the nature of the products, were "reasonably well informed and reasonably observant and circumspect".
  • Comparison of the goods - the board did not err in finding that the goods were similar, since they performed the same function (ie, to improve the medical condition of patients). Moreover, the goods shared the same distribution channels.
  • Comparison of the marks - the board did not err in taking into account only the word 'tribion' in the earlier CTM, since:
    • 'tribion' was the dominant element of the earlier mark;
    • the term 'harmonis' was likely to be perceived by consumers as a laudatory term indicating a specific product within the Tribion line, and did not affect the overall impression of the mark; and
    • the figurative element of the earlier mark was not sufficiently original to influence the overall impression of the mark.
  • Likelihood of confusion - given the similarity between the marks and the goods, the relevant public was likely to believe that the goods covered by the marks originated from the same undertaking.
The action was thus dismissed.
Yvonne Sastre, Grau & Angulo, Barcelona

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