Legal Updates

Pharmaceuticals – Opposition to Trade Mark

In Armour Pharmaceuticals Co v OHIM (Trade Marks and Designs) [2006], the applicant company produced and distributed pharmaceutical products and held a registered mark in France for ‘Calsyn’. The mark was registered in respect of ‘pharmaceutical and medical preparations, more specifically calcium based preparations’.

A third party applied for a community trade mark for ‘Galzin’ in respect of pharmaceutical preparations for the treatment of Wilson’s disease. Armour Pharmaceuticals opposed the application by the third party. This was granted by the Opposition Division of OHIM.

The third party sought audience with the First Board of Appeal, who granted their appeal on the grounds that although there was a degree of similarity, it was not enough to cause a likelihood of confusion. It was held that the French public would not be confused between the two marks due to the fact that the phonetics of the two marks were different and the goods under each mark were used to treat different disorders. In addition, it was thought that due to the nature of the goods in question, consumers and medical professionals would pay particular attention to the differences between these products and their manufacturers. Armour Pharmaceuticals challenged this decision on the grounds that the marks were too similar.

Armour Pharmaceuticals argued that the First Board of Appeal had erred in its application of Art 43 of the Regulation. They believed that the Appeal Board’s conclusion that the mark ‘Calsyn’ had only been used in relation to the sub category of calcium based pharmaceuticals had placed too narrow an interpretation on the legislation. They also believed that the Appeal Board had been mistaken in finding that the marks were not similar.

Art 43 of Regulation (EC) 40/94 provides:

(1) In the examination of the opposition the Office shall invite the parties, as often as necessary, to file observations, within a period set them by the Office, on communications from the other parties or issued by itself...

(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.

Armour Pharmaceuticals were partly successful in this argument for the following reasons:

 

• The likelihood of confusion to the public had to be considered globally. All the factors relating to the case had to be considered and it was held that the degree of similarity between the goods outweighed the differences. When the similarities of the goods and similarities of the marks were considered together, it was held that there was a likelihood of confusion on the part of the relevant public. This meant that the public could potentially mistake the two goods in question as being the same.
• ‘Calsyn’ was registered for ‘pharmaceutical preparations, more specifically calcium based preparations’. It was held that the category of pharmaceutical preparations was sufficiently broad to fall within a number of sub-categories capable of being viewed independently, one of which was ‘calcium based preparations’. In order for protection to be afforded to a mark in such a sub-category, use of the mark in relation to the goods or services in the sub-category was required. As there was no use of ‘Calsyn’ in relation to Wilson’s disease, in these circumstances the appeal board had been accurate in their interpretation of Art 43.

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© RT COOPERS, 2006. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.