The level of attention in the case of pharmaceuticalsRecent changes of OHIM’s practice Introduction On 2 January 2014, a set of new Guidelines for Examination in the Office for Harmonization in the Internal Market (OHIM) entered into force. The Guidelines, whilst not legally binding, set out OHIM’s current practice and have a major impact on the decisions taken by the examiners. The amendments include many changes and clarifications, some of which explicitly refer to pharmaceutical trade marks. One of the most remarkable amendments has the potential to cause a structural limitation of the scope of protection for pharmaceuticals and other health related products. It concerns the level of attention of end consumers in the case of both prescription and nonprescription medicines. This article sets out the previous practice and compares it to the approach as laid down in the new Guidelines. The General Court’s practice The General Court’s practice as regards the consumer’s level of attention in the case of pharmaceuticals has been inconsistent. Basically, the Court adopted two different approaches. On the one hand, in various judgments the Court adopted a dynamic approach. By way of example, in its judgment of 17 October 2006 in Case T-483/04 (Galzin), para. 79 the Court held Verena von Bomhard and David E.F. Slopek, Hogan Lovells, Alicante, Spain consumer’s level of attention was to be regarded as high. In its judgment of 15 March 2012 in Case T 288/08 (Zydus), para. 30 et seq., the General Court came to the same conclusion, disregarding the Board of Appeal’s observation that the broad category of pharmaceutical preparations in class 5 also included nonprescription drugs, a large number of which are mass-produced, low-cost and supplied through very broad distribution channels. pharmaceutical products are sold with prescription or over-the-counter. With regard to the latter medicines, it is stressed that the products affect the stateof health of the consumers. Therefore, consumers who are deemed to be reasonably well informed and reasonably observant and circumspect are less likely to confuse pharmaceuticals with different trade marks. With regard to preparations that require medical prescription, the Guidelines stress that consumers are likely to have a high degree of attentiveness. Overall, This approach was repeatedly confirmed, as per the General Court’s judgments of 16 June 2010 in Case T487/08 (Kremezin), para. 69 and of 23 September 2009 in combined Cases T-493/07, T-26/08 and T27/08 (Famoxin), para. 53 et seq. The latter decision was confirmed by the European Court of Justice (cp. order of the Court of 9 July 2010 in Case C-461/09 P, para. 19 ff.). Turning back to the General Court, when applying this dynamic approach to prescription drugs, the General Court generally concluded that the level of attention was to be regarded as high, as those preparations are normally supposed to treat serious disorders. Nevertheless, the approach clearly left room for the finding that the level of attention was only average or even low in the case of OTC drugs for the treatment of minor disorders. "that the level of attention of the average consumer of pharmaceutical preparations must be determined on a case-by-case basis, according to the facts in the case-file, especially the therapeutic indications of the goods in question.“ However, notwithstanding this clear guideline, in recent years OHIM’s practice showed an increasing tendency to follow the General Court’s static approach and to generally consider that the relevant level of attention was high in relation to any healthcare related products. "It cannot be claimed as a general rule that the average consumer who wants to buy a medicine for a specific purpose in a pharmacy will usually be very careful when purchasing a drug and will in general be able to distinguish between drugs with small name differences. The attention paid by this consumer depends on the specific drug and the specific purpose, need or effect (...) With regard to medicines for mild disorders and minor afflictions such as painkillers, sleeping pills or healing ointments, the degree of attention may be very low". OHIM’s old practice OHIM’s early practice followed the dynamic approach, according to which the level of attention of end consumers in the case of pharmaceuticals had to be assessed on a case-by-case basis and with a view to the characteristics of the products concerned. An early example is the Board of Appeal’s decision of 25 April 2001, R 816/1999-3, para. 28, where the Board held that the attention paid by consumers depended on the specific drug and its specific purpose. Indeed, as far as painkillers or other medicines for mild disorders were concerned, the degree of attention was held to be very low. Subsequently, OHIM’s Boards of Appeal repeatedly confirmed this approach and, as a result of that, the dynamic approach became OHIM’s official practice. With reference to the General Court’s afore-mentioned Kremezin and Famoxin judgments, OHIM’s Manual (the predecessor of the newly introduced Guidelines) stated: On the other hand, there is a second line of judgments, which has come to dominate the General Court's practice. It can be characterized as a static approach. By way of example, in its judgment of 15 December 2010 in Case T-331/09 (Tolposan), para 23 et seq., the General Court held that even as regards inexpensive painkillers that can be purchased without prescription, the OHIM’s new practice In light of the aforementioned development, it does not come as a surprise that the amended Guidelines for Examination in the Office (Part C, Opposition, page 11 et seq.) now explicitly refer to the General Court’s Tolposan and Zydus judgments. This causes a remarkable change as compared to the practice as laid down in the former Manual. As far as end consumers are concerned, the new Guidelines differentiate as to whether the 10 Comment The level of attention of the relevant public is one of the decisive criteria for the assessment of likelihood of confusion between two trade marks. OHIM’s new practice, according to which the level of attention is always considered to be high, could function as a trigger for the finding that even minor differences between the signs are sufficient to rule out a likelihood of confusion. As a consequence, the scope of protection of pharmaceutical trade marks is systematically reduced. In the worst case, this will further contribute to the so-called trade mark cluttering in class 5, a problem which has been discussed for a long time and which has recently been highlighted again by WIPO (cp. World Intellectual Property Report 2013, p. 96). Whilst in many cases the dynamic and the static approach do not lead to different results, assessing the consumer’s level of attention on a case-by-case basis seems to be more accurate. In fact, there are many pharmaceutical preparations that can be bought in regular drugstores or supermarkets and that can hardly be differentiated from regular everyday consumer goods such as cosmetics or food supplements. Whilst it is true that they affect the consumer’s health, this does not necessarily mean that the consumer would pay any particular importance to the trade marks – and of course cosmetics, skin care products and any type of food or beverages can also affect the consumer's health. In the case of pharmaceuticals, in many cases it is more likely that the consumers will primarily focus on different aspects, such as the function of a preparation or its price. In any case, it is a remarkable development that the practice changes from "the level of attention may be very low" to "the level of attention is always heightened" without the new Guidelines highlighting this change. The deviation from the old approach as laid down in the Manual is clear. "medicines, whether or not issued on prescription (including medicines for mild disorders and minor afflictions), can be regarded as receiving a heightened degree of attentiveness by consumers“.