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In its Tolposan judgment the GC plays
down the relevance of these criteria by
arguing that medicines are a very broad
category and that the decisive factor for
finding an adequate sub-category must be
the therapeutic indication. It is
noteworthy that this focus on the
intended purpose/therapeutic indication
does not follow from the Canon judgment
of the ECJ, but from the GC's Respicur
judgment (Tolposan, para. 36 with
reference to GC, judgment of 13
February 2007, T-256/04
[RESPICORT/RESPICUR], para. 29 et
seq.). However, the relevant passage in
said decision did not deal with the
likelihood of confusion, but with the
question, for which sub-category of goods
the mark at issue had been genuinely
used. As the concept of genuine use is
different from the concept of likelihood of
confusion, the reference to the principles
laid down in the Respicur judgment is
flawed.
All in all, the Tolposan decision is vitiated
by error. Its basic assumption, that the
level of similarity between medicines is
generally low as medicines are a broad
category that includes goods that may be
different, is a circular reasoning.
Moreover, the GC did not give any
weight to the fact that muscle relaxants
may also have the effect of alleviating pain
(ibid., para. 39), which should, however,
enhance the similarity to analgesics.
There are of course cases where two
pharmaceutical preparations with different
therapeutic indications are similar to a
low degree only. The OHIM Manual gives
a good example by referring to
contraceptives and eye-washes. In this
case, the different nature of the goods
and their different manner of use reduces
their similarity to a low degree.
Conclusion
OHIM's practice shows an increasing
tendency to deny likelihood of confusion
between pharmaceutical trade marks, if
they cover pharmaceutical preparations
with different therapeutic indications.
Whilst this development is in line with the
Tolposan judgment, the judgment itself
gives rise to criticism. It is inconsistent
with other decisions and overestimates
the importance of the therapeutic
indication. As set out above, the over-
riding question in assessing the likelihood
of confusion is whether the relevant
public might believe that the products in
question come from the same
undertaking. However, the public is well
aware that pharmaceutical companies
often manufacture a broad range of drugs
with various therapeutic indications.
Facts of the case
The Opponent is the owner of the
German trade mark SORTIS, which is
registered among others for the goods
medicines, pharmaceutical and veterinary
products in class 5. Based on this trade
mark, the opponent filed an opposition
against the German trade mark Sortistatin
in as far as it is registered for goods in
class 5, ie. sanitary preparations for
medical purposes; plasters, materials for
dressings; material for stopping teeth,
dental wax; disinfectants; preparations for
destroying vermin; fungicides, herbicides.
After the opponent had evidenced genuine
use of the trade mark SORTIS for the
goods medicines only available on
prescription, namely lipid lowering agents,
the German Patent and Trade mark Office
(PTO) denied there was a likelihood of
confusion between the conflicting trade
marks in two decisions, claiming that the
conflicting signs would be sufficiently
different.
Decision
The German Federal Patent Court (FPC)
granted the appeal after the opposition
had been partially withdrawn and only
directed against the goods pharmaceutical
and veterinary products; medicines;
dietetic substances for medical purposes,
food for babies.
Taking into account the general principles
of genuine use of pharmaceutical trade
marks as well as the higher attention of
the relevant public in the field of health,
FPC assessed that the conflicting goods
are partially identical and partially similar.
This is due to the fact that lipid lowering
agents are used to regulate increased
cholesterol levels, whereupon the
corresponding diet also has an influence
upon it so that a change of diet is one part
of the therapy.
As regards a similarity of the conflicting
signs, the FPC stated that the conflicting
signs were not sufficiently similar as the
last part -statin of the contested trade
mark Sortistatin could not be ignored.
However, the overall impression of the
contested trade mark Sortistatin is
characterized by the more observed initial
part Sorti- on its own. This is due to the
fact that the last part "-statin" is a
common suffix for active ingredients that
are used as cholesterol-lowering agents
for influencing the lipid metabolism. This
indication would be recognized not only
by the addressed professionals but also by
the general public, since -statin is a
common element of numerous
pharmaceutical trade marks.
The fact that the contested trade mark
Sortistatin is a unitary term would not
preclude the fact that it is characterized by
the initial part Sorti-. The determination of
a likelihood of confusion, from the point
of the characterization of the overall
impression of a trade mark by one of its
elements, does not necessarily require the
corresponding trade mark to consist of
more than one word. Rather, even in case
of trade marks that only comprise one
word, the relevant public would be able to
perceive one element thereof as being the
sole characterizing part. Consequently, the
FPC assumed a likelihood of confusion
between SORTIS and SORTI- in an aural
respect.
Remarks
The decision of the FPC strengthens the
protection of pharmaceutical trade marks,
as the Court emphasized that even if the
trade mark in question consists of one
word alone, it is still possible to
determine a characterizing element in that
mark. It is not necessary for the
corresponding mark to consist of more
than one word. Since a similarity in aural
respect can be sufficient to assume a
likelihood of confusion, it would be
illogical if the outcome was different
between signs consisting of two separate
words and signs consisting of one word
only.
Due to the present decision of the
German Federal Patent Court, it is now
more complicated to lean on a
pharmaceutical trade mark by combining a
similar sign with a further component.
However, this should also apply if the
additional component is not of weak
distinctiveness, but rather has an
independent distinctive character for
other reasons.
With respect to the ending -statin, it is
doubtful whether the general public would
indeed perceive it as factual information.
However, it is not necessary for both
addressed circles, the general public and
the professionals, to confuse the
conflicting trade marks SORTIS and
Sortistatin, in order to affirm a risk of
confusion. Rather, it would have been
more convincing to consider it sufficient
for the professionals alone to confuse the
conflicting trade marks SORTIS and
Sortistatin. Then pharmaceutical marks
would be comprehensively protected.
SORTIS and Sortistatin, likelihood of confusion
Karin Costescu, Bardehle Pagenberg, Munich, Germany