On 9 April 2014 the General Court of
the European Union (CJEU) annulled
OHIM's Board of Appeal earlier
decision that the marks OCTASA and
PENTASA were not confusingly
similar. Essentially, although the asa
suffix comprised an acronym for a
pharmaceutical's active ingredient, no
evidence had been brought to
demonstrate that the relevant public,
in the relevant territory, would readily
perceive the suffix as descriptive of
the goods in question. The Board of
Appeal were wrong in their decision
and the ensuing examination by the
General Court of the relevant public
and comparison of the respective
marks explains why the evidence was
found lacking in this case and makes
for interesting reading.
Decision
The General Court annulled the
Board of Appeal's decision because it
could not be established that end
users would consider asa, an acronym
relating to the active ingredient
mesalazine, descriptive of preparations
and substances for preventing and
treating diseases and disorders of the
gastro-intestinal tract.
The General Court found, at odds
with the Board of Appeal's decision,
that the trade marks are aurally and
visually similar by virtue of the shared
suffix, which had not been proven to
be descriptive. In addition, for those
end-users that recognise that the
beginnings of the marks in question
both refer to Greek numbers, there is
also a weak conceptual similarity. The
Board of Appeal had also failed to
correctly identify the scope of the
relevant goods in question and
therefore the relevant public. The
evidence had not been tailored to take
account of the fact that the relevant
territory is made up of those member
states where the earlier marks are
registered, none of which are English
speaking states. As a result, nothing of
much relevance could be reliably
deduced from the evidence.
Background to the dispute
In March 2009, Tillotts filed a
community trade mark application for
OCTASA for goods in class 5,
preparations and substances for
preventing and treating diseases and
disorders of the gastro-intestinal tract.
The active ingredient, mesalazine, is
also known as 5-aminosalicylic acid or
simply 5-ASA. Ferring opposed on the
basis of its earlier national marks,
PENTASA, registered for the broader
terms, pharmaceutical preparations
and substances in Austria, Hungary,
Italy, Poland, Slovakia, Sweden, France,
Ireland and the Czech Republic. In
April 2011 the opposition division
rejected the opposition and Ferring
appealed. In September 2012 OHIM's
Board of Appeal dismissed the appeal.
It held, in essence, that Ferring had
more or less shot itself in the foot
since it claimed that its extensively
used PENTASA product was a
pharmaceutical product prescribed for
the treatment of diseases of the
gastro-intestinal tract, also containing
mesalazine. In view of the descriptive
character of the suffix asa, the Board
of Appeal concluded that there was no
similarity between the trade marks
PENTASA and OCTASA.
Relevant law: Article 8(1)(b) of
Regulation 207/2009
This article provides that, upon
opposition by the proprietor of an
earlier trade mark, the trade mark
applied for is not to be registered if,
because of its identity with or
similarity to the earlier trade mark
there exists a likelihood of confusion
on the part of the public in the terri-
tory in which the earlier trade mark is
protected. The likelihood of confusion
includes the likelihood of association
with the earlier trade mark. According
to settled case law, the risk that the
public might believe that the goods or
services in question come from the
same undertaking or from
economically linked undertakings
constitutes a likelihood of confusion.
For the purposes of applying Article
8(1)(b) a likelihood of confusion
presupposes that both marks are
identical or similar and that the goods
or services which they cover are
identical or similar.
Furthermore, in order to find that
there exists a likelihood of confusion
for the purposes of Article 8(1)(b), it
is not necessary to find that the
likelihood exists for the whole of the
relevant public it is sufficient if it
exists for a significant part of that
public.
The following themes were the focus
of the General Court in assessing the
Board of Appeal's contested decision:
The relevant public and its
degree of attention
Where the goods in question are
medicines, the relevant public is
composed of medical professionals on
the one hand and patients as end-
consumers of those goods on the
other. Medical professionals are
considered to have a high degree of
attention when prescribing medicinal
products and it is fair to assume that
consumers of such products will also
be reasonably well informed,
observant and circumspect and are
less likely to confuse different versions
of such products.
The relevant territory in this case is
made up of the member states
covered by the earlier trade marks as
previously listed. The relevant public
comprises medical professionals and
patients as the end users. The goods in
question which the Board of Appeal
considered to be identical include
pharmaceuticals in general or, in more
specific terms, preparations and
substances preventing and treating
diseases and disorders of the
gastro-intestinal tract.
At the hearing, Ferring claimed that
the Board of Appeal had assessed the
descriptive character of the suffix asa
from the perspective of consumers of
an overly narrow category of goods.
The relevant public should include
consumers of pharmaceuticals in
general and not just consumers of
medicines containing mesalazine as
their active ingredient. As not all
disorders of the gastro-intestinal tract
are serious illnesses, there would be a
large group of consumers who would
not necessarily pay such a high degree
of attention. The General Court noted
that it was not clear from the
contested decision which category of
goods, medicines in general or
medicines with a specific gastro-
indication, was used by the Board of
Appeal in order to determine the
relevant public. Nor was it clear what
level of attention the Board of Appeal
attributed to the relevant public. These
findings rendered the decision
unreliable.
Comparison of the marks
The General Court found that the
Board of Appeal had not established
the descriptive character of the suffix
8
OCTASA v PENTASA : getting the groundwork right
Clare Jackman, Norton Rose Fulbright LLP