Similarity of marks Other cases that turned on the similarity of the marks, as the goods were identical, and where likelihood of confusion was denied, concerned the following pairs – all in class 5: KORAGEL v CHORAGON (judgment of the General Court); SENSIGEL v GENGIGEL; TITANIA v VIVANIA; EG LABO v IGLAB; UROL v DISSOLVUROL, v Abco. In this latter case it was held that the visual, phonetic and conceptual differences between ABC and Abco clearly ruled out a likelihood of confusion. found likelihood of confusion, and in particular, that goods in class 29 and food for babies in class 5 were similar. In ESSENS v ESSENTIX, the Board held that dietary supplements for medical purposes were similar to pharmaceutical products for the treatment of the central nervous system. The similarity of dietetic substances for medical use on the one hand and pharmaceutical preparations on the other was further confirmed in the case REVIDOX v REBIDOSE, essentially because these products share the purpose of improving a patient’s health problem. A likelihood of confusion was found to exist. Further, in BLISSEL v SISSEL, likelihood of confusion was confirmed for goods that were found similar to a normal degree. The earlier mark was protected for gynecological products and the junior mark covered goods in classes 5 and 10. The goods in class 5 were considered to be similar, those in class 10 not, or not sufficiently. Similarly, the Board found likelihood of confusion between marks that covered different apparatus or instruments in class 10 in two cases. One case concerned the marks PICCO v PICO (apparatus for monitoring physiological parameters in intensive medicine v portable electronic devices for providing negative pressure wound therapy), the other the marks IMAGIO v (opto-acoustic imaging apparatus for diagnosis of breast cancer v surgical and medical operating tables and instruments). On the other hand, the Board of Appeal found no likelihood of confusion, due to the differences in the goods, between PRIM v EYEPRIM for orthopedic articles and treatments for conjunctivitis. The Board emphasized that the healthcare sector is vast and that goods cannot be considered similar merely because they are related to it. weak element. This tour d’horizon shows that, in the microcosmos of pharmaceutical marks (in the widest sense) at OHIM, all discussions of general interest to the trade mark community in the EU are reflected, with some specificities, such as the general assumption of a higher level of attention, which may exclude confusion where it would be found for other types of goods. Continued from Page 7 International Update Novartis’s trade mark SOFTFIT based on Article 43, paragraph 1, points b) and c) of the Slovenian IP Law, i.e., due to the alleged descriptiveness and lack of distinctiveness with respect to the goods covered in Class 10 of the Nice Classification namely, surgical, medical and ophthalmic apparatus and equipment. Novartis responded to the provisional refusal by arguing that the mark is not descriptive of the goods covered in Class 10 and that it has at least minimum distinctiveness necessary to obtain protection. Novartis argued that SOFTFIT is a fanciful term, which is not featured in dictionaries and which does not have a meaning in the Slovenian language or in any other language. Novartis pointed out that the mark had passed the examination on absolute grounds in numerous countries, including in Ireland and in UK, where English is the official language, i.e., that the respective IP Offices obviously did not consider SOFTFIT to be descriptive or to lack distinctiveness. Novartis further argued that the distinctiveness of the mark must be examined taking into account the goods at issue and that the manner of use and purpose of ophthalmic, medical and surgical apparatus and equipment (e.g. scissors, tweezers, pliers, mirrors, hooks, etc.) is not to provide a “comfortable fit” to the user. Novartis also invoked the judgement of the Court (Second Chamber) of European Union No. C329/02 of 16 September 2004 in SAT.1 v OHIM, whereby the Court held that registration of a trade mark is not subject to finding a specific level of linguistic or artistic creativity or inventiveness on the part of the proprietor of the trade mark. The Slovenian IP Office accepted Novartis’ arguments and granted protection to SOFTFIT in entirety. The above decision shows that the Slovenian IP Office is willing to reverse its initial refusal based on absolute grounds if the trade mark holder provides a well-argued response in favour of distinctiveness of the mark in relation to the designated goods. % ) % % Also in the case concerning HOMP v OOMPH - trade marks for medical services in class 44 – the low similarity of the marks was found to avoid any confusion on the part of the – attentive – public. On the other hand, the following marks were considered to be sufficiently similar % ) % for creating a likelihood of confusion in % respect of identical goods: SKINTRO v SIXTRO, both for pharmaceutical goods (in particular with a view to the nonEnglish speaking public who would not recognise skin or six as part of the marks); APOVIT v ATOVIT A Z (contrary to the Opposition Division who had focused on the difference in the first syllables and the weakness of -vit standing for vitamins); LARYVOX v LARYMEX, both for identical goods in class 10; ' and for (inter alia) pesticides, fungicides and herbicides in class 5. Similarity of goods A likelihood of confusion was furthermore found in cases where the goods were not identical. Across different classes of the Nice Classification, in the three cases XEROX DENTAID v xerospray, xerorinse, and xerogel (all figurative marks), the Board held that drawing the line between mouth care preparations in class 3 and pharmaceutical preparations in class 5 was difficult, and that there was a significant overlap. This is a reminder to applicants to limit their applications to the pharmaceutical preparations of interest, at least in view of an opposition. And in the case v FARMIO wolne od GMO Weak elements Finally, in one case, the Board of Appeal took into account the weak nature of the common element of the marks at issue. The opposition was based on a number of marks consisting of or containing the element medi and the allegation of a family of marks based on that element. Yet the Board found no likelihood of confusion with the trade mark applied for, because of the weakness of the element medi. The evidence did not show use of a variety of marks allowing the conclusion of a family of marks or an otherwise enhanced distinctiveness of this inherently (which translates to FARMIO free from genetically modified organisms) the Board 11