ohim common practice on likelihood of confusion - more or ...€¦ · chris mcleod, elkington and...
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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?