Seemingly novel approach to comparison of goods applied in OPDREX Case

European Union
In Bastos Viegas SA v Office for Harmonization in the Internal Market (OHIM) (Case T-33/08, June 11 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had held that there was a likelihood of confusion between the marks OPTREX and OPDREX with regard to goods in Class 5 of the Nice Classification.
 
Bastos Viegas SA, which is incorporated in Portugal, sought to register the figurative mark OPDREX as a Community trademark for "surgical cloth, gauze for dressings, bandages for medical purposes and articles for dressings" in Class 5 and "orthopaedic articles” in Class 10. 
 
French company Pierre Fabre Medicament SA lodged an opposition based on a French registration for the trademark OPTREX for "pharmaceutical products" in Class 5. The OPTREX mark is used for eye-cleaning solutions. During the course of the opposition proceeding, Bastos Viegas expressly excluded "preparations for the treatment of eyes" from the specification of the goods in Classes 5 and 10.
 
The Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between the marks in respect of the goods in Classes 5 and 10. The Board of Appeal partially upheld the decision of the Opposition Division, finding that there was a likelihood of confusion with regard to the goods in Class 5, but not with regard to the goods in Class 10.
 
Bastos Viegas appealed, but the CFI dismissed the action. The interest of the decision lies in the comparison of the goods in Class 5.
 
First, the CFI stated that the Board of Appeal had not erred in finding that "surgical cloth, gauze for dressings, bandages for medical purposes and articles for dressing" and "orthopaedic articles" were similar to eye-cleaning solutions. Some of these products (eg, gauze and bandages) were exclusively used in the context of the treatment of eyes. Moreover, when associated with an eye-cleaning solution, gauze and bandages helped to clean the eye before or after a surgical treatment.     
 
Although the earlier trademark covered only “pharmaceutical products” in Class 5, it seems that Pierre Fabre was not required to demonstrate proof of use of its mark. Therefore, it may be assumed that the CFI's reasoning was based only on goods potentially falling within the broad category of "pharmaceutical products". Because eye-cleaning solutions fall within the category of "pharmaceutical products", the restriction of the goods covered by the mark applied for had no effect on the assessment of the similarity of the goods. Arguably, this represents a novel way of comparing products - the comparison was based on potential products falling within a broad category of goods, rather than on the specification of the goods.
 
Second, the CFI followed a more common approach in its overall assessment of the similarity of the goods, pointing out that the goods at issue:
  • had the same nature (ie, pharmaceutical products for human use);
  • had the same purpose or destination (ie, medical products for external use which may be utilized within the context of therapeutic or surgical treatment);
  • targeted the same consumers; and
  • were distributed through the same channels.
This assessment is in line with EU case law on the comparison of pharmaceutical goods, under which all pharmaceutical products are considered to be similar regardless of their purpose and features.
 
The CFI concluded that the similarities between the goods outweighed the differences between them. The CFI thus applied to the comparison of the goods a wording usually reserved to the comparison of the marks.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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