Words from the Chair Bio: Similar Trade Marks? Novartis AG v OHIM Thomas Hannah, GSK On 10 December last year, the General Court of the CJEU issued its decision on a long-running trade mark dispute between Novartis AG and a UK company, Dr Organic Ltd. The dispute began in April 2009 with an opposition by Novartis against Dr Organic’s CTM application for BIOCERT in Class 5 on the basis of Novartis’ earlier Austrian registration for BIOCEF, also in Class 5, which dated from 1991 and is in use as an oral cephalosporin antibiotic. By a decision of April 2010, OHIM dismissed the opposition in its entirety. It was of the view that the relevant public would be able to distinguish between the signs at issue due to the elements cef and cert. This verdict was appealed by Novartis and the Fourth Board of Appeal of OHIM issued its decision in September 2011. In this, it supported the original decision primarily on the basis that both marks contain the element bio but that this is a common abbreviation for biological in German. Accordingly, the relevant public would pay less attention to this descriptive element and focus their attention on the suffixes of the signs, thereby being aware of the differences between them. Novartis was not satisfied and appealed against OHIM to the General Court. It argued that OHIM had incorrectly assessed: (1) the level of attention of the relevant public; (2) the similarity between the signs; and (3) the likelihood of confusion. equally concerned as to the drug they were purchasing. It was not necessarily put forward, but it could conceivably be argued that consumers would pay more attention when purchasing in these channels, as they would not have the safety net of an expert’s prescription to rely on. It is well established in case law that consumers have a heightened degree of attention to some extent when purchasing pharmaceutical products, but it is interesting to see the General Court maintaining this stance even in light of very particular and modern channels. Those who were lucky enough to be attending the PTMG Conference in Venice will already know that it was my last Conference as Chair of the PTMG. It has been a fantastic experience for me to be leading this unique organisation and I had a great time getting to know many of you better. I am really thrilled we have been able to change the fees structure for our Conferences, to make them more attractive for our Industry members and I am sure everyone would agree that the excellent attendance level from the Pharmaceutical companies in the last few years is a great outcome for all of us. It has been nice to see the organisation evolving, while keeping with its nice traditions. I hope we have been able in the last three years to share with you some interesting topics and that we have provided you with interesting food for thought. The Committee will continue to work hard to come up with relevant topics and excellent speakers at forthcoming conferences. Furthermore, I am convinced that our new Chair, Frank Meixner, will do a great job guiding the organisation. I wish him all the very best. I look forward to seeing many of you at our next Conference in Warsaw. In the meantime, I wish you a nice, relaxing and refreshing summer. Similarity between the signs While the General Court agreed that the bio elements of the signs were of weak distinctive character, it departed from the Board of Appeal by stating that they should still be taken into consideration. Indeed, given that the marks share the first five letters, it stated that visually there should be an average degree of similarity despite the differences in the endings. The same applied phonetically, regardless of particular Austrian pronunciation evidence to the contrary. Conceptually, there was held to be a certain degree of similarity. These were all contrary to the Board of Appeal’s findings, which considered the similarity to be lower in each instance. Likelihood of confusion The goods in question were held to be identical or similar and so this could offset to some extent a lower degree of similarity between the signs (T-81/03 Mast-Jägermeister v OHIM). This, combined with the importance of considering the overall impression as highlighted in point 2 above, meant that the General Court was able to find a likelihood of confusion between the marks at issue, “even if the public has a heightened level of attention”. Level of attention of the relevant public It is well established (and not disputed in this case) that the relevant public is professionals from the medical and pharmaceutical fields and general end consumers. The Board of Appeal had found that this public would pay an enhanced degree of attention to the signs at issue since the use of those products affects health. Novartis argued that this level of attention should be reduced given that BIOCEF is often sold without prescription in drugstores and supermarkets and also on the internet or by phone; an environment, it submitted, that would cause the consumer to be distracted and therefore pay less attention. The General Court disagreed: the lack of a prescription and/or use of the internet did not mean the consumer’s attention would be lowered. They would still be Conclusion OHIM’s decision was accordingly annulled in Novartis’ favour and OHIM was ordered to pay costs. This is an interesting decision in the sense that the General Court is insisting that due attention should still be paid to very descriptive elements of marks. This does seem to be a sensible position given the importance of overall impression, and the judgment presents interesting analysis of how to approach such weak descriptive elements and also the level of attention paid by the average consumer to pharmaceutical products in the modern age. Sophie Bodet 2