The Court of First Instance (CFI) has upheld the opposition by Aventis Pharma SA (Aventis) against Nycomed GmbH's (Nycomed) application for the Community trade mark PRAZOL (Case T-95/07). In doing so, it has offered guidance as to who the average consumer for medicinal products is and their level of attention when confronted with a similar mark.

Background

In 1995, Aventis registered a Benelux trade mark for PREZAL in class 5 for "pharmaceutical products" and other goods. In 1999, Nycomed GmbH (Nycomed) applied for a Community trade mark for PRAZOL in class 5 for "Medicines, excluding veterinary products". In 2000, Aventis opposed Nycomed's application on the basis of Art. 8(1)(b), Reg. No 40/94, citing its trade mark PREZAL.

In 2002, the Opposition Division dismissed the opposition on the basis that Aventis had not proved sufficient use of the earlier mark. Aventis appealed to the Board of Appeal which, in 2004, annulled the decision on the ground that the Opposition Division had not taken into consideration all the facts, evidence and arguments submitted by the parties. The case was then remitted to the Opposition Division.

In 2005, the Opposition Division upheld Aventis' opposition on the basis that there was a likelihood of confusion given the strong similarity between the marks and the identical nature of the goods. Nycomed appealed to the Board of Appeal. In 2007, the Board of Appeal, while acknowledging that the goods were identical, annulled the decision of the Opposition Division on the basis that: 1) the relevant public consisted of medical professionals and end-consumers who would, given the type of products, exercise a 'relatively high degree of attention'; and 2) there was no similarity between the signs (on the basis that the marks had no particular meaning and the clear phonetic difference outweighed their low level of visual similarity). As a result, it held that there was no likelihood of confusion. Aventis appealed to the CFI.

Arguments and reasoning

The average consumer

Before the CFI, Aventis argued that the Board of Appeal had been wrong in holding that the average consumer would exercise a 'relatively high degree of attention'.

The CFI upheld the Board of Appeal's decision on this, finding that the average consumer of the goods was both a medical professional and the end-consumer. With regard to the former, the CFI held that the medical professional displayed a high degree of attention when prescribing medicinal products. With regard to the latter, it held that, irrespective of whether pharmaceutical products are sold with or without prescription, the end-consumer exercised an "above average" level of attention. It concluded that, as a result, the average consumer was less likely to confuse different versions of the relevant products.

Nycomed attempted to adduce new evidence that Aventis' PREZAL product was only available by prescription (the implication being that the average consumer should be limited to medical professionals). The CFI rejected this evidence (on the basis that the CFI is for the review of the application of law, not evidence) but noted that this evidence would not have changed its decision anyway (the implication being that the end-consumer would be relevant irrespective of whether it received the products with or without prescription).

Comparison of marks

Aventis argued that the Board of Appeal had been wrong to find that there was no similarity between the marks. The CFI agreed with Aventis on this issue thereby overturning the Board of Appeal's decision. It held that:

  1. visually the similarities of the marks outweighed the dissimilarities, noting that the words consisted of two syllables, six letters (five of which are identical and four of which are in the same order), starting in 'pr', with 'z' in the middle and ending in 'l' and that (as held by the Board of Appeal) the existence of different vowels was not sufficient to cancel the similarities;
  2. phonetically the similarities outweighed the dissimilarities, noting that the respective marks both had two syllables beginning with the sound 'PR', with a distinctive 'Z' sound and ending with 'L';
  3. conceptually, despite Nycomed's PRAZOL being a reference to the omeprazol family of medicines with the active ingredient lansoprazole, the end-consumer would not understand either meaning and, therefore, that the respective marks had no meaning.

The CFI concluded that given the strong visual and phonetic similarity and the absence of conceptual meaning, the marks were "very similar".

Comparison of goods

Nycomed argued that the Board of Appeal had erred in finding that the goods were identical on the basis that it would be improbable that the marks would appear on truly identical or very similar goods. Aventis in fact applied the PREZAL mark only to specific types of medicines, namely gastro-intestinal preparations. The CFI rejected this argument, upholding the Board of Appeal's finding, stating that, where the goods covered by the earlier mark include goods covered by the mark applied for, those goods were to be regarded as identical.

Outcome

The CFI concluded that despite the end-consumer exercising a relatively high degree of attention, because of the close similarity of the marks and the identity of the goods, this degree of attention was "not sufficient" to prevent a likelihood of confusion. The CFI therefore overturned the Board of Appeal's decision and upheld Aventis' opposition to Nycomed's trade mark application.

Comment

The CFI, in effect, concluded that the average consumer of medicinal products will always be (among others) the end-consumer (irrespective of whether the medicinal product is available via prescription only or "over-the-counter"). The natural extension of this conclusion is that, given that the end-consumer's knowledge will always be less than a medical practitioner's, the end-consumer will represent the threshold when establishing the degree to which the average consumer is well informed, reasonably observant and circumspect. Although these end-consumers may exercise a higher degree of attention than the average consumer of everyday goods; this finding does mean that there will be greater scope for confusion than there would have been had the average consumer been determined to be medical professionals alone.

In the opposition in hand: the CFI, when addressing the question of whether, conceptually, there was a similarity between the marks, disregarded the fact that Nycomed's PRAZOL was a reference to the omeprazol family and active ingredient lansoprazole on the basis that the end-consumer would not have been aware of this meaning ( although medical practitioners may well have been). It is possible that had the average consumer been held to be aware of this meaning, the conceptual differences between the marks may have been sufficient to tip the balance against a likelihood of confusion finding.

This decision is wholly consistent with the 2004 decision of the UK Appointed Person in F Hoffman - La Roche A.G v Pfizer Products Inc – BL O/088/04. The approach taken to the average consumer of pharmaceutical products and his level of attention was very similar. The Hearing Officer in that opposition determined that the average consumer's "degree of circumspection would be higher than for every-day goods but lower than for expensive or sophisticated items" and the Appointed Person noted that this approach could not be faulted. This led to a finding that there was a likelihood of confusion between the pharmaceutical trade mark EVONISE and EVARISE (the opposed application). However, specific mention was made in that decision of the fact that these pharmaceuticals would be available both with and without prescription.

By contrast, in 2002 in H Lundbeck A/S v Omega Farma ehf - BL O/208/02, the Appointed Person found that there was no likelihood of confusion between OROPRAM and H Lundbeck A/S's prior SEROPRAM trade mark, both for pharmaceuticals. Here the Appointed Person was resistant to the suggestion that there should be either a lower standard (on public health grounds) or higher standard of likelihood of confusion when considering pharmaceutical trade marks.

On another note, it is concerning that it took eight years (with decisions by the Opposition Division and Board of Appeal being overturned) to establish whether PRAZOL and PREZAL are confusingly similar. In a report by the Office of Harmonization in the Internal Market (OHIM), entitled "Quality of Decisions Service Standards 2008", OHIM found that, in quarter 3, only 80.85% of its opposition decisions complied with its own "quality" criteria (against a target of 95%). Of the 19.15% that did not comply, 6.03% had an incorrect outcome. This means that, at present, one in every twenty Community trade mark opposition decisions is incorrect; a rather unnerving statistic.