On May 24, 2011, the General Court adopted an interesting approach for assessing the similarity between two pharmaceuticals having different therapeutic indications.
The contested trademark E-PLEX specifically excluded medicines to combat diseases in connection with the central nervous system. The earlier opposed trademark EPILEX was registered for anti-epileptics. This is no surprise that the Court upheld these products as being similar regardless of their therapeutic indications given there remained all pharmaceutical preparations, aimed at treating health problems of the same consumers and could all be found in health centres and pharmacies. This is by the way in line with the main UE tendency (for instance in VETPHARMA / VEPRAMA ruled by the Board of Appeal in 2009).
But the Court adopts the same comparison process as per assessing the similarity between two signs: the Court found that, on the basis of a global approach, the similarities between the goods outweighed the differences.
With regards to the comparison of the signs, E-PLEX and EPILEX were regarded as being of medium visual and phonetic similarity. The Court concluded that a risk of confusion existed.
But what about the intellectual dimension with regards to the mark EPILEX covering anti-epileptics? Couldn’t the link between the radical EPIL(E) and these products have weighted more than this? Also the specific visual structure of E-PLEX is not mentioned in the decision which is a bit frustrating on all these points.