OHIM Common Practice on likelihood of confusion

- more or less confusion for pharmaceutical trade

marks?

Chris McLeod, Elkington and Fife

PTMG, Warsaw

1 October 2015

Harmonisation

Principle that there should be

consistency within the EU

Applies not only to trade marks

OHIM Common Practice on likelihood of

confusion

Known as CP5

Not known as C3PO

CP5 context

• Part of OHIM’s Convergence Programme, which is part of the

European Trade Mark and Design Network (ETMDN).

• Intended to “establish and communicate clarity, legal certainty,

quality and usability for both applicant and office”.

• There are currently 7 convergence projects in total, also covering

classification, class headings and other issues. See

https://www.tmdn.org/ for further details.

CP5 history

• The convergence project started in 2007.

• CP1 (harmonisation of classification) and CP2 (convergence of class

headings) have been completed, i.e. all member states have signed

up to them.

• CP5 - intended to address the division between OHIM and national

offices on assessment of weak components in the context of relative

grounds for refusal (likelihood of confusion).

Specific issues

• Different practices and interpretations of importance of shared

component with little or no distinctiveness.

• Different outcomes when assessing likelihood of confusion,

even on the same facts.

• Result is unpredictability, inconsistency and legal uncertainty.

Solutions which CP5 has sought to

provide

• Common practice, including a common approach.

• Common communication strategy.

• Action plan to implement practice.

• Analysis of the need to address past practice.

Scope of project

• Define marks which are subject to assessment of distinctiveness.

• Determine criteria for that assessment.

• Determine impact on likelihood of confusion when the common

elements have low or no distinctiveness.

Outside scope of project

• Enhanced distinctiveness.

• Acquired distinctiveness.

• Consensus on the factors relevant to the assessment of LOC.

• Consensus on the interdependencies between assessment of

distinctiveness and other factors when considering LOC.

• Language issues – English is the benchmark when considering

low or no distinctiveness.

CP5 in detail - 1

Assessment of distinctiveness of earlier mark as a whole, and of all

components of both marks in order of shared elements, but NB that

the F1-LIVE judgment (C-196/11 – 24 May 2012) means that "it is

necessary to acknowledge a certain degree of distinctiveness of an

earlier mark" on which an opposition to a CTM application is based.

Criteria for assessment of distinctiveness (cf Lloyd Schuhfabrik), i.e.

a weak mark is less able to perform the essential function of source

indication, making its scope of protection narrow, so it is necessary

to use the criteria to determine whether the mark meets a minimum

threshold of distinctiveness, and to consider varying degrees of

distinctiveness.

CP5 in detail - 2

Impact on LOC when common components have a low degree of

distinctiveness: need to focus on impact of other components on the

overall impression of the marks, considering the similarities and

differences and the distinctiveness of those elements.

If the marks share only an element with a low degree of

distinctiveness there will probably be no LOC, unless other elements

are less distinctive or equally non-distinctive, or the overall

impression is highly similar or identical.

CP5 in detail - 3

Impact on LOC when common components have no distinctiveness:

need to focus on non-coinciding elements, taking into account their

similarities and differences and their distinctiveness.

If the marks share only non-distinctive components, there will be no

LOC, but there will be LOC when marks contain other similar

figurative and/or word elements if the overall impression is highly

similar or identical.

Current status of CP5

“Common Communication on the Common Practice of Relative

Grounds of Refusal – Likelihood of Confusion (Impact of non-

distinctive/weak components)" published 2 October 2014

Implementation date was 2 January 2015 (at the latest)

Finland and Italy have said "ei"/"no"

Iceland, Norway and Turkey have implemented it

When is CP5 potentially applicable?

• OHIM oppositions and other inter partes proceedings, including

appeals

• Trade mark applications, oppositions and other inter partes

proceedings in the national offices which have implemented CP5

Significance in the pharmaceutical sector

• Many pharmaceutical trade marks contain elements which are, at

least arguably, descriptive or non-distinctive, e.g. MED, PULMO,

CORT, OPTI, ANGI etc.

• CP5 may assist defence of an application from an opposition

based on a "weak" mark

• It may therefore also reduce the prospect of such oppositions

being pursued

• It may make it more difficult to register such marks through

national offices which still raise objections on relative grounds,

and may make it easier to overcome objections based on such

marks

Case Law

Audience participation time

Class 5 judgments from General

Court and CJEU

Show of hands

Disclaimer

• Not all cases postdate CP5 implementation

• Each case on its own merits

• Many more cases than it is possible to cover in this presentation

• Do not operate machinery whilst reading class 5 case law – may cause

drowsiness

MENODORON v MENOCHRON

(C-311/14 P – 20 January 2015)

MENODORON v MENOCHRON

(C-311/14 P – 20 January 2015)

The appellant notes that the element “MENO” is devoid of distinctive

character so that the comparison should only be between the elements

“DORON” and “CHRON” which create completely different

impressions. It also claims that the marks in question have clear

phonetic differences.

This argument must immediately be rejected because it presupposes

that the relevant public has a sufficient knowledge of Latin and Greek

to understand the meaning of the elements “MENO” and “CHRON”,

and in-depth medical knowledge enabling it to understand the meaning

of the element “DORON”. However, as OHIM has asserted, it appears

to be out of the question that the relevant public would have such

knowledge.

(General Court judgment of 28 April 2014)

VAMED v AKTIVAMED

(T-551/13 – 26 March 2015)

VAMED v AKTIVAMED

(T-551/13 – 26 March 2015)

"It is appropriate to reject this last argument from the outset because it presupposes that

the relevant public knows the meaning of the term “AKTIVA” as a technical term in the field

of accountancy. However, as OHIM has stated, the public in question would not have such

knowledge. Moreover, the goods and services in question have no connection with

accountancy. It follows that even if the relevant public knows the term “AKTIVA” in the

context of medicines, heating apparatus, sanitary apparatus or services relating to the fields

of beauty care or forestry, it is very likely that the aforesaid public will not think of this

technical term when seeing the mark applied for.

Therefore, contrary to the appellant’s assertions, although it is correct that a section of the

public may understand the suffix “MED” as a reference to the medical sector, this does not

play a secondary role in the marks at issue. Moreover, even if the relevant public

subdivides the mark applied for, it is inconceivable that it would do so exclusively into the

elements “AKTIVA” and “MED”."

CHORAGON v Koragel

(T-169/14 – 13 May 2015)

Koragel

CHORAGON v Koragel

(T-169/14 – 13 May 2015)

"…in the present case, it must be stated that, even if the suffix ‘gel’ of the sign

Koragel is likely to be understood by the whole of the relevant public as referring

to a gel-based product for medical or veterinary purposes, that conceptual

content is not sufficient to confer on the sign considered a clear and specific

meaning within the meaning of the case-law cited above. Moreover, whilst the

sign CHORAGON may evoke, for part of the relevant public, a scientific term of

Greek origin, the fact remains that it is devoid of any intelligible conceptual

content"

ANTISTAX v ANGIPAX

(T-368/13 – 10 February 2015)

ANTISTAX v ANGIPAX

(T-368/13 – 10 February 2015)

“It is therefore not in error that the Board of Appeal concluded that the term

“ANTI” would, in the mind of the public, refer to the idea of “opposed to; against”

and that a medicine having “ANTI” as its prefix could be perceived as treating a

particular disorder even if in the present case, as OHIM has correctly stated,

“STAX” appears to have no particular meaning.

With regard to the word “ANGIPAX”, the element “ANGI” could be perceived by

certain consumers as being an abbreviation of the word “angine” (note: this is

French for “throat infection”) and the element “PAX”, derived from Latin, as

referring to the idea of peace, which may enable the public to discern that the

product in question is intended to ease a throat infection.”

Tiger device v GELENKGOLD and tiger device

(T-599/13 – 7 May 2015)

Tiger device v GELENKGOLD and tiger device

(T-599/13 – 7 May 2015)

“Considering that the relevant public will refer to the mark applied for by

pronouncing its verbal element “GELENKGOLD”, whereas with regard to the

earlier mark it will only be able to pronounce the word “TIGER”, it is necessary to

conclude that the marks at issue are phonetically dissimilar, contrary to the Board

of Appeal’s finding.

…it is appropriate to note…that the Board of Appeal conducted the visual

comparison of the marks at issue considering on one hand all the elements of the

mark applied for, and on the other hand the figurative element which constitutes

the earlier mark. This process must be approved because at the heart of the

mark applied for, the verbal element “GELENKGOLD” is not at all negligible in the

sense of the case law referred to in paragraph 29 above, and neither is the

representation of a tiger.”

Tiger device v GELENKGOLD and tiger device

(T-599/13 – 7 May 2015)

“Indeed, the public will recognise in the word “GELENKGOLD” the word “GOLD”

which does not appear in the earlier mark. Therefore, to the non-German-

speaking public, the marks at issue have only an average degree of conceptual

similarity.”

PENTASA v PENSA PHARMA

(T-544/12 and T-546/12 – 3 June 2015)

PENSA PHARMA

PENTASA v PENSA PHARMA

(T-544/12 and T-546/12 – 3 June 2015)

"…the term ‘pharma’ in the sign PENSA PHARMA cannot be capable of making

on consumers or health professionals a particular impression which they will

remember and which is capable of differentiating the goods and services with

which that term is associated from the goods covered by the earlier mark."

BIOCEF v BIOCERT

(T-605/11 – 10 December 2014)

BIOCERT

BIOCEF v BIOCERT

(T-605/11 – 10 December 2014)

"… it must be noted that the finding of a likelihood of confusion in the present

case would not grant the applicant a monopoly on the element ‘bio’, given that

the existence of a likelihood of confusion leads solely to the protection of a

certain combination of elements without, however, protecting as such a

descriptive element forming part of that combination."

OHIM Board of Appeal decisions

• R 538/2013-1: REMEDERM v EMIDERM COSMETICS (3 April 2014) – no

likelihood of confusion due to descriptiveness of DERM in relation to skin

treatment products.

• R 3136/2014-4: Urol v DISSOLVUROL (16 July 2015) – “For part of the goods

for which the earlier mark is protected, namely those meant to treat ‘urological’

problems, the mark may be perceived as allusive and therefore somewhat

weakened.”, so no likelihood of confusion.

• R 2467/2014-2: NUTRIPLETE v Nutriplen Protein (17 July 2015) – Protein

element insufficient to counteract similarity.

Conclusions

• Very narrow scope

• Not a change in practice

• Early days

• Positive step – consistency and certainty, in principle

• Widely endorsed

• Good news for trade mark lawyers?

Koniec

Comments? Questions?