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Recent decisions issued by the OHIM Board of Appeal illustrate the difference in the assessment of products similarity when either pharmaceuticals are to be compared with para-pharmaceuticals or when only pharmaceuticals are involved.

 

 
* In EUBOS vs./ EOBOS, the Board considered on June 12, 2007, that “Medicated preparations for cleansing and care of the skin” and “disinfectants” were “manifestly different”. These products can however be used to cover wounds. The skin is also commonly disinfected prior to cleansing or care. Lastly an internet search disclosed complementary properties between all these products, even including a product referenced as “Skin care disinfectant”.
* In METROXX vs./ MEDOX of June 14, 2007 the Board ruled that “pharmaceuticals for the treatment of dermatological and gynaecological illness” and “biological preparations in the form of anthocyanins and antioxidants” were “slightly similar”. However, as antioxidants are widely used in dermatology practice and are known by the public in particular for their antiageing properties, the retained level of similarity is too low in our view.
* In STROMIC vs./ ZOMIG of June 20, 2007, the Board retained an average to high degree of similarity between urology and migraines pharmaceuticals. The Board considered their pharmaceutical nature, their manufacture by pharmaceutical companies, their reselling by pharmacists and the possibility to have both treatments prescribed by the same doctor to the same patient. However, low consideration is given to the difference of therapeutic indications involved. We do not fully agree as the goods clearly belong to different pharmaceuticals categories. Filing a pharmaceutical trademark also for para-pharmaceutical products remains a defence advantage when bringing actions on the basis of a trademark not subject to compulsory use. The nature of the goods being the most influencing element, other arguments should therefore be carefully detailed and evidenced by opponents.

An overall signs comparison neglected

 
On July 1st, 2007, the OHIM considered the CTM ZVARENEX dissimilar with RAVANEX. The decision was founded on the difference of beginnings regarded as having a greater impact. In addition, the suffix EX was said to be weakly distinctive because commonly used for pharmaceuticals.
An overall comparison of the marks which covered identical products might have brought a different solution. Their structure is very close. They share the same sounding syllables creating a similar impression. The OHIM approach is particularly criticisable considering that the aural comparison is supposedly the main test when it comes to pharmaceutical trademarks according to the major case law, at least when no meaning is involved.
Conceptual comparison has a great impact on dissimilarity
• The CTM CERTORAL could be deemed similar to the prior mark CEFORAL in view of their identical structure, rhythm and identical succession of vowels. However, the OHIM took into account the perception of the relevant Portuguese public who distinguishes and understands the word CERTO (meaning TRUE) in the CTM application and therefore instantly differentiates the two signs (June 29th, 2007).

• In accordance with the opposition division, the OHIM Board of Appeal considered on June 29, 2007 that the CTM application LOTEROX was unlikely to be confused with the earlier mark LOVENOX. In these two cases, the Examiner considered the prefixes CERTO and LOVE to be differentiating significantly the two signs and judged that their obvious and immediate meaning distinguished them from the earlier marks. The weight of CERTO and LOVE is disproportioned. Not only did the OHIM focus its analysis on these prefixes but it did not also consider enough the aural and visual overall assessment of their similarities. Additionally, this position remains in contradiction with the solution of the MUNDICOR / MUNDICOLOR case (CFI March 17th, 2004).
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