Publications > No Respite for Respicur

Case T-256/04 Mundipharma AG v OHIM 13 February 2007. RESPICORT/RESPICUR

The CFI annulled the decision by OHIM that the opponent’s earlier mark RESPICORT was dissimilar to the applicant’s RESPICORT and would not lead to confusion among the relevant public. The goods were in class 5 and the relevant public was deemed to be made up of two groups, professionals and average consumers of certain pharmaceutical preparations. The former would not be confused by the marks, but the latter, finding the marks similar, would.

Background

The applicant before the Court of First Instance, a Swiss company called Mundipharma AG, was the owner of an earlier German national mark RESPICORT, registered for ‘pharmaceutical and sanitary preparations; plasters’ in International Class 5, and the unsuccessful opponents before the Opposition Division of OHIM and thereafter the Second Board of Appeal against registration of the Community application RESPICUR for ‘therapeutic preparations for respiratory illnesses’, also in Class 5. The intervener in this CFI case - the original applicant of the new mark - was Altana Pharma AG, a German company.

Goods relevant to the opposition

When Altana Pharma (hereafter ‘AP’) put the opponent to proof of use of its class 5 goods according to Article 43(2) and (3) of the CTMR, it did so without challenging the products it knew to be actually on the market, namely ‘multi dose dry powder inhalers containing corticoids, available only on prescription’. In the event, Mundipharma was unable to provide satisfactory evidence for the genuine use or proper reasons for non-use as per the Regulation, which - to remind us - states:

Article 43(2) and (3) of Regulation No 40/94 provides:

2. If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.

 

Instead of the opposition being rejected, there remained a basis for the continuance of the opposition in the goods that were outside the scope of the initial request for proof of genuine use. The reason for this in law was that proof of use of the mark on which the opposition is founded need be furnished only when requested by the applicant.

Although accepting the finding that genuine use of the mark had not been proven, Mundipharma contested the restriction of protection under the mark for the purposes of the opposition to the precise description of its current products (‘multi dose dry powder inhalers containing corticoids, available only on prescription’). This, it argued, would restrict its economic freedom of action. The issue, therefore, was the relationship of the non-contested products as fore-described to the Class 5 heading of the earlier mark (‘pharmaceutical and sanitary preparations; plasters’).

Guidance on this matter is found in Case T 126/03 Reckitt Benckiser (España) v OHIM - Aladin (ALADIN) [2005] ECR II 2861, paragraphs 45 and 46 which deals with the issue of subcategories. It is worthwhile quoting these two paragraphs:

45. ...if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

46. Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.


 

The Court found that the category of goods of the earlier mark was sufficiently broad for a number of sub-categories to be found within it which could be viewed independently, but it rejected the sub-category arrived at by the Board of Appeal - which was the precise description of the product as actually marketed. It argued, on the contrary, that the category must reflect the specific needs of the consumer in searching for a product or service, the purpose or intended use being paramount since this is a criterion used in making purchases. A description focusing on active ingredient, e.g. ‘glucocorticoids’ (as proposed by the Intervener) was inadequate. Instead, the Court defined the appropriate sub-category as ‘therapeutic preparations for respiratory illnesses’. This happened to be the same as the applicant’s heading, hence the relevant goods of the opponent were judged to be identical, and not a self-contained sub-category.

Likelihood of confusion - the relevant public

For the purposes of Article 8(1)(b) of the CTM Regulation, and the global assessment of the likelihood of confusion, regard is to be had for all significant factors, including the relevant public or consumers of the goods: “account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see, by analogy, Case C 342/97 Lloyd Schuhfabrik Meyer [1999] ECR I 3819, paragraphs 25 and 26).”

AG had argued that the opponent’s products were only available on prescription, thus the relevant public were health care professionals. In any event, patients tend to show a particularly high level of attention in choosing therapeutic preparations intended to treat serious health problems such as those at issue in the present case.

The Court, in its turn, held that as the relevant goods were the (wider) category of ‘therapeutic preparations for respiratory illnesses’ which could be both over the counter and prescribed preparations, the relevant public is made up of both health care professionals and patients suffering from respiratory illnesses, in their capacity as end consumers. The latter would, certainly, generally show a higher than average level of attention. Also, as the opponent’s mark was a German national registration, the relevant public were all Germans.

Likelihood of confusion - similarity of signs

Whereas OHIM had found for the dissimilarity of signs, the CFI found for similarity. But lest this should immediately suggest how fickle, subjective and arbitrary the whole European system of comparison of signs is, it is important to state at once that in this decision the nature of the relevant public was quite crucial in the outcome of the analysis by the CFI. Because end consumers and health care professionals form separate groups of the relevant public, it may be that the signs are perceived differently, especially in their conceptual connotations. Conceptual differences, in this case, will play a prominent role in the global assessment of the likelihood of confusion for these particular groups.

The principles used in the reasoning of the Court were taken from the PASH/BASS case:

According to settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the opposing signs, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T 292/01 Phillips Van Heusen v OHIM - Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II 4335, paragraph 47, and case-law cited).

In that respect, conceptual differences which distinguish the marks at issue may be such as to counteract to a large extent the visual and aural similarities existing between the marks. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately, and the other mark must not have such a meaning or must have a totally different meaning (BASS, paragraph 54).

Global assessment of overall impression: RESPICORT (earlier mark) v RESPICUR

With regard to the visual comparison, the Court found close similarity: the words comprise a single word, are of similar length and share the first six letters ‘respic’ and the eighth letter ‘r’. The other differences - between the vowels ‘u’ and ‘o’ or the addition of the letter ‘t’ in the earlier mark - were not such as to eliminate the visual similarity (OHIM had argued that these create a perceptible difference).

With regard to the phonetic comparison, once again the Court found for close similarity. Its argument is as follows:

... the opposing marks will be pronounced as three syllables, with the pronunciation of the first two syllables ‘respi’ being identical in both cases. The pronunciation of the third syllable, ‘cur’ and ‘cort’ respectively, points both to similarities, caused by the presence of the consonants ‘c’ and ‘r’, and to differences, due to the distinction between the vowels ‘u’ and ‘o’, and the letter ‘t’ in the earlier mark. That being so, those differences are not sufficient to offset the identical nature of the first two syllables and the similarity due to the presence of the consonants ‘c’ and ‘r’ in the pronunciation of the third syllable.

OHIM’s argument, on the other hand, emphasised dissimilarity: “Phonetically, the mark applied for ends with a long and low-pitched sound because of the combination of the letters ‘u’ and ‘r’. By contrast, the component at the end of the earlier mark is characterised by the hard sound of the letter ‘t’, which is pronounced by the German public.

But where the Court most differed from OHIM was in the analysis of conceptual differences. OHIM had maintained that the conceptual differences between the signs were such as to counteract any visual or phonetic similarities. It had argued that:

‘the component ‘respi’ will be understood by the relevant public as being descriptive [i.e. to do with respiratory illness] and will thus not be perceived as being an indication of commercial origin. Accordingly it cannot contribute to establishing a similarity between the signs in question. The component ‘cort’ will be perceived as being a reference to corticoids by the professional public and by some end consumers. Likewise, the component ‘cur’ will be construed by those same groups of the public as referring to the words ‘cure’ or ‘heal’.

The Court disagreed. First, it noted that, although normally the average consumer perceives a mark as a whole and does not proceed to analyse its various details (Lloyd Schuhfabrik Meyer, paragraph 25),: ‘the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him’ (Case T 356/02 Vitakraft-Werke Wührmann v OHIM - Krafft (VITAKRAFT) [2004] ECR II 3445, paragraph 51).

Next, the Court noted that the conceptual perception of the opposing marks will be different according to which group of the relevant public is being considered. Amongst the professional public a conceptual difference would be noted since the marks would be understood by reference to their respective elements, namely ‘respiratory’ for ‘respi’, ‘cure’ or ‘heal’ for ‘cur’ and ‘corticoids’ for ‘cort’. Thus, by breaking down the two marks into their respective components, they will interpret the mark applied for as corresponding to a ‘cure for respiratory problems’ and the earlier mark as designating ‘corticoids intended for respiratory illnesses’. In this there was a certain degree of conceptual divergence, even though they ‘share the general idea of being linked to respiratory issues.’

With regard to end consumers, their level of attention would be higher than average, and so being able to: ‘ ...distinguish the component ‘respi’ in the two marks in question and to understand its conceptual content, which refers generally to the nature of their health problems.’

This notwithstanding,‘their limited knowledge of medical terminology will prevent them from being able to discern the conceptual references of the components ‘cur’ and ‘cort’.’

The result is that there will be conceptual similarity since the first element of each word would be the only one with a clear and definite meaning.

The Court held that this first component, despite its descriptive character, was prominent. Because it takes up ‘two or three syllables and is longer than the respective second components,’ it makes a ‘significant contribution to the overall impression produced by the two signs in question’. Thus similarity should not be discounted on account of descriptiveness. The professional public, also, would probably see both marks as descriptive - of intended use or of active ingredient - but would still perceive both marks in their respective overall impressions.

In conclusion, the Court found that the ‘opposing marks are somewhat similar for the professional public and highly similar for the end consumers. For the latter, the marks are visually, phonetically and conceptually similar. The professional public, by contrast, will perceive a certain conceptual difference between the two marks, which is not, however, sufficient to counteract fully the visual and phonetic similarity which has been established’.

The overall conclusion reached was that there was a likelihood of confusion between the mark applied for and the earlier mark in the minds of German end consumers, but not for the professional public. Despite the latter, and because of the former group, the decision of the second Board of Appeal of OHIM was annulled.

Summary

Points of interest:

  • The onus is on the applicant in an opposition proceeding to define the scope of its request for proof of genuine use
  • Proof of use in opposition proceedings, where a category heading is broad enough to have sub-categories, affords protection only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong
  • In arriving at a sub-category, it is fundamental to consider the purpose or intended use of the product or service in question
  • The relevant public may be comprised of different groups with different levels of education and attentiveness
  • Conceptual dissimilarities may to a large extent counteract visual and aural similarities
  • Verbal signs, for the purpose of conceptual comparison, may be broken down into elements notwithstanding the general rule that marks are perceived as a whole
  • Different groups may have different conceptual perceptions of the same sign

This article first appeared in the May 2007 issue of the ITMA Review