The EUIPO’s Board of Appeal has held that neither a heightened degree of attentiveness in relation to pharmaceutical products, nor the fact that conflicting marks primarily coincide in elements which health professionals might understand as an allusion to an active ingredient, can rule out a likelihood of confusion. This is all the more true if the earlier mark enjoys enhanced distinctiveness
(EUIPO, decision of the Fourth Board of Appeal in Case R 3264/2014-4 [Pentasa/Xenasa]).
In a decision on 29 April 2016 the EUIPO’s Board of Appeal has again recognised the importance of the consumer’s perspective when comparing pharmaceutical products. The decision concerns an EUTM application for “XENASA” which initially covered, amongst others, pharmaceutical preparations in class 5. Ferring B.V. opposed based on its earlier EUTM “PENTASA”, which covered “pharmaceutical products and substances” in class 5. Given that the marks at issue covered identical goods, the decisive question was whether the signs are similar enough to give rise to a likelihood of confusion on the part of the public.
OHIM’s (as it was then called) Opposition Division (“OD”) held at first instance that “XENASA” kept sufficiently away from “PENTASA” so as to rule out any likelihood of confusion. In support of this view, the OD elaborated on the distinctive and dominant elements of the signs, differentiating between health professionals on the one hand and the general public on the other. In so far as health professionals are concerned, the OD held that the suffix “ASA” was weak, based on an allusion to the active ingredient. From the perspective of end consumers, however, this element was held to be distinctive to a normal degree, as they would not grasp any allusive meaning.
Nevertheless, and notwithstanding that the OD based its assessment on the premise that the earlier mark enjoys enhanced distinctiveness, it denied likelihood of confusion. The key argument was that the differences at the beginnings of the signs, in particular the striking letter “X” at the beginning of “XENASA”, suffices to keep the marks safely apart both in relation to health professionals and end consumers.
Upon appeal by Ferring, the Board of Appeal (“BoA”) annulled the OD’s decision and rejected the contested application. The Board’s line of arguments partly follows the reasons put forward by the OD: given that the earlier right is an EUTM, the relevant public is the general public, i.e. health professionals as well as end consumers, in the EU. The goods were held to be identical or similar notwithstanding a limitation filed by the applicant in the interim.
In other aspects, however, the BoA deviated from the OD’s assessment and ultimately came to another conclusion.
As to the comparison of the signs, the BoA found that having regard to the coincidence in the elements “EN” and “ASA”, there is an average degree of visual and phonetic similarity, in particular from an end user’s perspective. Whilst it is true that the marks differ in their initial letters “X” and “P” respectively, one must also take into account that the following parts (i.e. “ENASA” and “ENTASA”) are highly similar. The conceptual comparison remains neutral, as neither of the signs at issue as a whole has a meaning.
As regards the inherent distinctiveness of the earlier mark, the Board held that irrespective of whether the suffix –ASA is allusive for health professionals, this is not the case for end consumers, for whom the inherent distinctiveness is normal.
Unlike the OD, which, for procedural reasons, based its assessment on the assumption that the earlier mark PENTASA enjoys enhanced distinctiveness, the Board explicitly confirmed that due to its extensive use and market success the earlier mark enjoys a broadened scope of protection. Moreover, contrary to what the applicant has argued, such enhanced distinctiveness exists not only for health professionals, but also for end consumers.
Overall, the BoA held that, notwithstanding the higher level of attentiveness, there is a likelihood of confusion, at least for end consumers who constitute a significant part of the public.
Overall, the decision shows once again that the end consumer’s perspective plays a crucial role in the EUIPO’s assessment of likelihood of confusion between pharmaceutical trade marks. This means that similarity can be found notwithstanding the distinctiveness of a term from the perspective of medical professionals.