Words from the Chair A Community trade mark law’s perspective on suggestive signs David E.F. Slopek, Hogan Lovells, Germany Introduction Once again, we are approaching the end of the year and our final issue of LL&P in 2014. In terms of PTMG Conferences, I think it is fair to say that 2014 has been a brilliant year! To start with, we came back to London for the Spring Conference, after a (too) long absence from the British capital. This proved to be a great success and the quality of the presentations as well as the venue were commended. The level of service at the Savoy is definitely not a myth and it was a pleasure to be holding a Conference in such a magnificent hotel. The continent on which the Autumn Conference would take place was the subject of many discussions within the PTMG Committee. Some of you might remember that the only time the PTMG organised a conference in the United States was in 2006, in Boston. Going back to the US for the second time was not an easy decision but the reality has proven that the Committee’s decision was the right one. We had a remarkable Conference, and the feedback received was very positive: “Magnificent Conference” – “Congratulations on a fantastic meeting from beginning to end” – “the presentations were outstanding” – “Sessions were very informative and interesting” – “outstanding social events”. One of our objectives was to gain a good attendance level from our US colleagues and it was so great to see many delegates from the States, including a significant number from the pharmaceutical industry. In particular, it was lovely to see some of our industry colleagues joining a PTMG Conference for the very first time and I hope it will only be the first of a very long series. I wish all the PTMG community, your family and friends, a Merry Christmas and Happy New Year. I hope you will get a very well deserved end of year break. It is common practice to use trade marks for pharmaceuticals which are capable of providing prescribing doctors, pharmacists or other health professionals with certain information about the branded products. To give but two examples, Aspirin alludes to its active ingredients, i.e. A stands for acetyl and the syllable spir is derived from spireic acid. Likewise, Botox refers to its active ingredient botulinum toxin. Such signs are often referred to as so-called suggestive, evocative or allusive signs. In many cases they refer to the international nonproprietary name (INN) of the active ingredient. However, they can also refer to other characteristics of the drug, such as its indication, target group or means of administration. It is beyond question that health professionals are familiar with the existence of this naming practice in the pharmaceutical sector and that they can easily decipher the information conveyed in suggestive signs. However, it is often overlooked that when assessing the likelihood of confusion between two pharmaceutical trade marks, the consumer’s understanding of such suggestive marks can tip the scales. This article explains why and how the consumer’s view impacts on the legal assessment. Meanwhile, it is well-established case-law that in the case of pharmaceutical trade marks, the relevant public comprises both end-consumers and health professionals even if the preparations require a doctor’s prescription (GC, judgment of 9 February 2011 in Case T-222/09 [ALPHA D3/ALPHAREN], para. 43 et seq.). For the assessment of the likelihood of confusion, the fact that the relevant public comprises both health professionals and end consumers cannot be overestimated. Whilst it is always easy to argue that the professional public is able to understand the precise meaning of conflicting signs and to grasp small differences which help differentiate between the conflicting signs, these arguments do not apply to end consumers. However, given that likelihood of confusion on the part of the public is sufficient, it is the end consumer’s perception which is decisive for the assessment of the likelihood of confusion. Why is the consumer’s perception decisive? Sophie Bodet Under Community trade mark law, it is crucial to assess the likelihood of confusion from the consumer’s perspective. Initially, the General Court (GC) held that consumers may only be taken into account in the case of nonprescription drugs (GC, judgment of 13 February 2007 in Case T-256/04 [RESPICORT/RESPICUR], para. 45). Subsequently, the Court of Justice of the European Union (CJEU) held that even if the drugs are available in pharmacies only and despite the fact that the choice of those products is influenced or determined by intermediaries, the likelihood of confusion must also be assessed from the end consumer’s perspective (Judgment of 26 April 2007 in Case C-412/05 P [TRIVASTAN/TRAVATAN], para. 58). 2 In particular, the argument that the mere coincidence in a descriptive or at least weak element does not suffice to cause a likelihood of confusion cannot be given any weight if one cannot establish that the relevant public understands the alleged descriptive meaning of an element. It is precisely for that reason that the GC recently annulled the Board of Appeal’s decisions in the two parallel PENTASA/OCTASA cases, thereby highlighting that the Board failed to establish the descriptive character of the suffix -ASA from the perspective of the end consumers when carrying out the comparison of the conflicting signs. Are consumers familiar with suggestive marks? Having regard to the importance of the consumer’s perception of suggestive signs, the question arises whether they are familiar with the common use of such marks in the pharmaceutical sector. If so, it is more likely that they will identify allusive elements when being confronted with the marks. Remarkably, in one judgment the General Court held that the applicant’s submissions on the frequent use of allusive signs in the sector of therapeutic preparations cannot be accepted", because, inter alia,