CTM case law review on pharma marks from April to July 2015 Verena von Bomhard, Bomhard IP During the four months April to July 2015, the Boards of Appeal of OHIM and the General Court of the European Union issued roughly 140 decisions concerning trade marks that cover goods in classes 5 or 10, and services in class 44. About 50 decisions addressed substantive issues relating to goods or services of interest to the pharmaceutical industry. This article provides an overview of those decisions, trying to highlight tendencies. If anything of relevance has been overlooked, the author apologizes. GUIDE for a wide list in class 5 was annulled as the Board did not think the examiner had explained why the fact that a guide was a book containing explanations made the mark descriptive for goods in class 5. The case was remitted for further examination. In ten cases, the Board maintained the refusal of figurative or stylized marks. The first group of marks in this respect concerns signs where the verbal element is entirely descriptive or non-distinctive and where the figurative elements even increase the non-distinctive impression. Note that Qualitätsmarke – Das Plus in der Pflege is German for quality mark the plus in care, and APOTEKE is extremely similar to the Danish, German, and Croatian words for pharmacy (APOTEK, APOTHEKE, APOTEKA respectively). Other marks that were refused were (without claim to completeness) the shape of a container (white plastic with red cap), RIBOTRANSPORTER, SCIENCE BEHIND BEAUTY, BasenCitrate, all in class 5, and POROSTRAP and SwingJaw for goods in class 10. SwingJaw, applied for in relation to instruments for use with medical and surgical endoscopes, was defined as "a pair of hinged or sliding components of a machine or tool designed to grip an object that moves rhythmically to and fro or moves in a curve forceps" and, as such, descriptive. Absolute Grounds There were 20 decisions concerning absolute grounds for refusal. The examiner’s objection was overcome in six cases. • NAPANT had been refused as similar to the INN BIRINAPANT. The Board held, however, that the mere similarity between an INN and a pharmaceutical trade mark did not justify the refusal of the latter. MTB EXPLORER referred to services, namely the identification of microorganisms, in class 44. The first instance examiner had considered that MBT would be understood as standing for microbiotecnology; the Board, however, did not consider that to be proven. In the case PROBAR, the Board took issue with the examiner’s dissection of the mark, which concerned dietetic supplements, into the elements PRO and BAR, reading the mark as meaning bars for professionals. The Board therefore annulled the examiner’s decision but remitted the case back to it for further examination, as the examiner had not considered the Spanish meaning of PROBAR which is simply to try. SYSTALA, even though similar to the Czech word systola, was not found descriptive for pharmaceutical goods, contrary to the examiner’s finding. As regards GENESTAT, the examiner considered this to indicate statistics regarding genes, which led to the refusal of the mark for molecular diagnostic platform devices in class 10. The Board, in turn, found that the mark was a fanciful neologism and allowed the applicant’s appeal. Finally, the rejection of the word mark Relative Grounds Phonetic comparison for figurative marks Of the decisions concerning likelihood of confusion, the most notable is that of the General Court concerning the following marks: Earlier mark: Mark applied for: • The second group of marks fell victim to the increasingly strict criteria applied in the examination of figurative marks that contain non-distinctive words. These marks were all applied for in relation to, inter alia, dietetic supplements. • Similarly, the circle around the number 69 did not help to make the following sign distinctive for condoms: and the application was also rejected for sex related goods in classes 5 and 10. The third group, finally, contains marks that were considered non-distinctive by reason of their simplicity and potentially decorative nature. The first concerned oral care, the second nutritional supplements. OHIM’s Opposition Division and the Board of Appeal had found these marks to be confusingly similar. The Court, however, disagreed, holding that there was only a low degree of visual and conceptual similarity, and that the marks were phonetically dissimilar. While the Board had assumed that there could be no aural comparison, the Court considered that consumers would "pronounce" the earlier figurative mark as tiger. The case will now go back to OHIM’s Boards of Appeal for a new decision on the merits. High attention level Likelihood of confusion was found or denied in about the same number of cases. The assumption of a high level of attention on the part of the relevant public is now ubiquitous and had an impact on many cases, in two cases explicitly so. In the case THEA v ATHEA, the Board of Appeal found likelihood of confusion in respect of goods in class 3 but not in classes 5 and 10, due to the higher level of attention. Also in the case DYNAMIN v the Board held that the high level of attention helped to exclude a likelihood of confusion – in that case in respect of nutritional supplements. • • • 10 The following mark, however, was considered registrable in class 5 (and many other classes), although not in class 28: &