CTMs for "Chemicals for pharmaceutical use"
Earlier mark: LONARID |
Later mark: MOMARID |
Nepentes S.A. filed a CTM application in 2010 for the word MOMARID covering various goods including "chemicals for pharmaceutical use" in class 5. The application was opposed by Boehringer Ingelheim Pharma on the basis of its prior CTM registration LONARID which covered various goods including "pharmaceutical preparations" and "pharmaceuticals for the reduction of pain and fever" in class 5.
OHIM upheld the opposition and rejected the application in respect of all the goods that had been opposed. Nepentes appealed.
The Board of Appeal found that some of the goods applied for were identical to the broad term "pharmaceutical preparations" for which Boehringer was able to show genuine use. The opposition was upheld in respect of these identical goods. However, it also held that although the relevant public's level of attention for the goods in question was above average, the term "chemicals for pharmaceutical use", as applied for, was dissimilar to any goods covered by Boehringer's earlier registration, including "pharmaceuticals for the reduction of pain and fever". The Board considered that "chemicals for pharmaceutical use" was a term aimed solely at pharmacists or laboratories which used them for further processing into finished products. As a result, the opposition was rejected in respect of these goods.
Boehringer appealed the decision of the Board of Appeal.
The General Court agreed with the Board of Appeal's view that the relevant public for the goods in question consisted of professionals in the medical sector and the general public. However, it found this assessment incompatible with the Board of Appeal's view that the term "chemicals for pharmaceutical use" was concerned with goods aimed solely at pharmacists or laboratories for further processing into finished products. Further, it agreed with OHIM's initial view that this term was rather vague and may lead to different interpretations. As a result, it concluded that such a term was too imprecise to support the Board of Appeal's findings that the goods are:
(a) solely raw materials which are included in the composition of medicines and not finished goods; and
(b) aimed only at pharmacists or laboratories and not at end consumers.
As a result, the General Court found that "chemicals for pharmaceutical use" might fall within the category of "pharmaceutical preparations" of which "pharmaceutical preparations for the reduction of pain and fever" was a sub-category – both being terms covered by Boehringer's prior registration. Consequently the goods might be regarded as identical. The Board had therefore been wrong to rule out the existence of a likelihood of confusion between the marks given the similarity between the signs.
The Board of Appeal's decision was therefore annulled in this regard.
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