No likelihood of confusion between FAMOXIN and LANOXIN, says CFI

European Union
In GlaxoSmithKline SpA v Office for Harmonization in the Internal Market (OHIM) (Joined Cases T-493/07, T-26/08 and T-27/08, September 23 2009), the Court of First Instance (CFI) has rejected a combined appeal by GlaxoSmithKline SpA, Laboratórios Wellcome de Portugal Lda and The Wellcome Foundation Ltd (collectively the applicants) against decisions of the First Board of Appeal of OHIM in which the latter had held that there was no likelihood of confusion between the marks FAMOXIN and LANOXIN.

On November 30 2001 Serono Genetics Institute SA filed an application for the registration of FAMOXIN as a Community trademark (CTM) for "pharmaceutical preparations for the treatment of metabolic disorders adapted for administration only by intravenous, intra-muscular or subcutaneous injection". The mark was registered on May 31 2005.

On September 30 2005 the applicants filed three applications for a declaration of invalidity of the FAMOXIN mark, relying on the earlier trademark LANOXIN, which is registered for "pharmaceutical preparations with digoxin for human use", "medicinal and pharmaceutical products" or similar goods depending on the country of registration. The applications were made under Article 52(1)(a) of the Community Trademark Regulation (40/94). The applicants argued that due to the similarity between LANOXIN and FAMOXIN and the identity or similarity of the goods covered by the marks, there existed a likelihood of confusion on the part of the public. On October 30 2006 the Cancellation Division of OHIM rejected the applications.

The applicants appealed, but the First Board of Appeal of OHIM rejected all three appeals based essentially on the same reasoning. The applicants appealed to the CFI. 
 
First, the applicants contested the Board of Appeal's finding that the earlier marks were used for "pharmaceutical preparations for cardiovascular illness" or "pharmaceutical preparations with digoxin for human use for cardiovascular illnesses" depending on the country of use. The applicants submitted that these sub-categories of therapeutic areas were arbitrary.

The CFI stated that pursuant to Articles 56(2) and (3) of the regulation, the proprietor of a CTM may require proof that during the period of five years preceding the date of an application for a declaration of invalidity, the earlier mark has been put to genuine use in the territory for which it is protected. If the applicant for a declaration of invalidity cannot show the genuine use of the earlier mark in the market concerned, the earlier mark cannot be relied upon to show the invalidity of the CTM. Moreover, if the earlier mark has been used only in relation to part of the goods or services for which it is registered, then it is deemed registered only in respect of those goods or services. Therefore, if a trademark has been registered for a broad category of goods or services, but has in fact been used only for a narrow sub-category of those goods, only the registration covering that sub-category can be relied upon in invalidity proceedings.

The CFI further stated that the category of pharmaceutical preparations covered by LANOXIN was sufficiently broad for it to be possible to identify various sub-categories within it. One sub-category that could be identified related to the particular therapeutic use of the pharmaceutical preparations concerned. The Board of Appeal had thus been entitled to identify the sub-category of "preparations for use for cardiovascular illnesses" and had not acted arbitrarily.  

In addition, the CFI upheld the board’s decision that the relevant public for the purposes of assessing confusion consisted of medical professionals (doctors and pharmacists) and end consumers under the supervision of professionals. These individuals have a higher-than-average degree of attentiveness. The preparations were prescribed and, therefore, patients with a normal degree of attentiveness would not normally have to see and choose between the trademarked products.

Moreover, the CFI upheld the board's finding that there was a certain degree of similarity between the goods concerned. The CFI concluded that the goods:
  • were of the same type (pharmaceutical preparations);
  • had the same intended purpose (ie, to treat human health problems); and
  • used the same distribution channels (ie, health centres and pharmacies). 
However, they had different therapeutic indications.

The applicants also submitted that taken as a whole, the visual and aural similarities between LANOXIN and FAMOXIN were high. The CFI held that although both marks contained the suffix ‘oxin’ (a common ending for words in the pharmaceutical field), the elements at the beginning of the marks (‘Ian’ and ‘fam’) were visually different. These prefixes had a greater overall visual impact than the final element ‘oxin’. The CFI also pointed out that consumers generally took more note of a mark’s beginning.

The CFI further held that the initial syllables of the marks, ‘fa’ and ‘la’, had similarities in vowel sounds. However, the second syllables, ‘mo’ and ‘no’, produced differing sounds. Little weight was given to the final element ‘oxin’, as it is often perceived as descriptive of pharmaceutical preparations. Therefore, it was the first syllables that were likely to give greater impact aurally. The CFI upheld the board's finding that the marks were only very slightly similar.

Finally, the CFI conducted a global assessment of the likelihood of confusion. It stressed that such assessment concerned only the likelihood of confusion as to the commercial origin of the goods. The risk that consumers might confuse one medicinal product for another was irrelevant. The court concluded that there was no risk that the public would believe that goods bearing the trademark FAMOXIN came from the owner of the LANOXIN mark or from an undertaking economically linked to it. Therefore, there was no likelihood of confusion between the marks and the actions were dismissed.

The decision reinforces a number of important points that parties should bear in mind when considering an appeal. It confirms the Board of Appeal’s ability to limit the scope of protection to sub-categories of goods that the mark has been used for. This ensures that trademarks do not benefit from a wide scope of protection just because they have been registered for a broad category of goods if:
  • use has been in relation to a more limited specification; and
  • the registration on which the owner relies is potentially vulnerable to revocation for non-use.
Also of significance is the CFI’s view of what is important when assessing the likelihood of confusion for consumers. The court held that rather than consumers confusing the goods and taking one product instead of another, it is confusion as to the origin of the goods that is of greater significance.

Selina Davies, Hammonds LLP, London

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