Pensive General Court provides useful guidance for practitioners John Colbourn, Redd Introduction On 3 June 2015, the General Court of the EU issued judgment in a long running battle between Pensa Pharma SA and Ferring BV and Farmaceutisk Laboratorium Ferring A/S. The case is interesting because it covers a number of points of relevance for trade mark practitioners, and some specific points of interest for pharmaceutical trade mark practitioners in particular. Many of these points may sound like familiar arguments, especially to earlier rights holders, but/ is always useful to find it authority for the familiar arguments enunciated in a decision of the courts. Background by the signs bearing in mind, in particular, their distinctive and dominant elements; the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details; that only if all other components of a mark are negligible should the assessment of the similarity be carried out solely on the basis of the dominant element. The Court held that the consumer would nevertheless break the sign down into word elements which suggest a specific meaning or which resemble words known to the consumer, and weak distinctive character of one element does not necessarily mean that the element will not be taken into consideration. observations that the following goods were to be considered similar to pharmaceutical preparations on the basis that they have the same purpose or intended use (medical care), are aimed at the same consumers (end consumers and professionals in the health sector) and use the same distribution channels: sanitary preparations for medical purposes; dietetic substances adapted for medical use; materials for dressings, plasters and disinfectants. It might have been interesting to see whether a finding of 0 have followed similarity of goods would 1 0 PPSA successfully challenged Ferring had 1 on proof of use resulting in a narrower specification for the earlier rights. Level of attention of the average consumer of pharmaceutical goods and related services The Court made a useful observation that, even though the level of attention of the relevant public for pharmaceutical goods and services may be considered to be high, it does not necessarily follow that differences between the marks will negate a likelihood of confusion. In this case, given the similarity between the goods, services and signs at issue the level of attention was not such as to exclude the possibility that the public might believe that the goods or services came from the same undertaking or an economically connected undertaking. Even with high attention, the key principle of law remains that the average consumer rarely has the chance to make a direct comparison between the marks and must rely on an imperfect recollection of $ / ! them. In this case, while the relevant public would not disregard the element According to the judgment, in 2000 the PHARMA, as it could not be considered parties agreed a co-existence agreement negligible (at least visually), aurally the under which Pensa Pharma SA (PPSA) was public will not necessarily pronounce the permitted to maintain and use a particular element as it would be considered CTM registration for the blue figurative “superfluous” because of the nature of the mark shown below. It is not clear what, if goods and services, and conceptually the any, other terms element would have no effect because it governed use of and was descriptive for the goods and services making applications for at issue. As a result, in the global registrations of the assessment of whether there would be a word marks or other likelihood of confusion, the element devices. PHARMA would not “contribute to the In 2006, PPSA applied for two Community essential function of a trade mark” trade marks, for the two marks shown because it is a well-known abbreviation below, in relation to goods in classes 3, 5 designating companies that belong to the and 44: pharmaceutical industry. As such, it would not enable the relevant public to PENSA PHARMA distinguish the goods and services in question from one undertaking or another and therefore, in a global assessment of all Ferring BV and Farmaceutisk the relevant factors, the // element Laboratorium Ferring AS (Ferring) initially / - PHARMA was not capable of affecting the // / opposed the applications, but withdrew assessment of a likelihood of confusion the oppositions in December 2008. The - register 1 in ! 1 with the earlier marks. applications proceeded to ! . 1 and," . 1" 88 1, September 2009, Ferring filed applications Comparison of goods and services -of the two registrations, for invalidity for which the marks would be used? ##$% // based on its rights in the mark PENTASA. ##$% // ! PPSA tried to argue that the Board of The invalidity was ultimately directed at " Appeal should have taken account of the goods in classes 5 and 44 only. assertion that PPSA intended to use the signs in issue only for a subset of the The OHIM Cancellation Division upheld products in question, and that Ferring the applications for invalidity in their itself only used the earlier rights for a entirety and the Board of Appeals upheld subset of pharmaceuticals too. / The Court that decision. PPSA appealed to the / / on a number of grounds, rejected that as a matter of law – the General Court comparison is not with the goods for all of which were dismissed. which the proprietor envisages using the. Brand PHARMA mark - it is the specifications which are to ! . ! ! be compared, subject only to a proof of PPSA argued that the Board of Appeal had use requirement for the earlier marks. not taken sufficient account of the Even though PPSA filed a limitation to its presence of the element PHARMA in the specification, it did not specifically put word mark PENSA PHARMA. The Court Ferring to proof of use and so the limited noted the established principles of law, specification was still identical to the including in particular that: the global specification protected by the earlier assessment of a likelihood of confusion rights. must, so far as the visual, phonetic or conceptual similarity of the signs at issue, The Court also made some interesting be based on the overall impression given 8 $ / ! Registrations by consent? Co-existence on the market, 88 1, withdrawing oppositions and prior co-existence agreement PPSA argued that Ferring had consented ! " " to the registration of the two registrations, relying on apparent peaceful co-existence in the Spanish market, the fact that Ferring had withdrawn the oppositions against the applications, and in reliance on the terms of the co-existence / / " agreement from 2000. " The relevant provision, Article 53(3) of the CTM Regulation 207/2009, provides that a ! ! 1/ . CTM shall . be declared invalid where not 1/ the proprietor of the earlier right “consents expressly” to the registration before submission of the application for invalidity. Even if accepted as a fact, the alleged peaceful co-existence did not satisfy the requirement for consent to be ‘express’, which is perhaps not surprising.