On 16 May 2017, the General Court handed down its decision in Alfa Wasserman SpA (AW) v EUIPO, Pharma Mar intervening (Case T- 85/15). The decision follows the opposition by Pharma Mar (Pharma), owner of the EU trade mark YONDELIS for pharmaceutical and veterinary products and preparations for use in oncology, against the application by Alfa Wassermann (Alfa) for the mark YLOELIS for pharmaceutical products and medicines not for use in oncology.
The Opposition Division upheld Pharma’s opposition, finding a likelihood of confusion between the marks. This decision was upheld by the First Board of Appeal.
Alfa appealed to the General Court submitting that there could be no likelihood of confusion because:
- the goods in question were not similar; and
- the signs were not visually or phonetically similar.
The General Court held that the goods covered were of the same nature (pharmaceutical products for human use), same proposed or intended use (treatment of human health problems), had the same consumers (medical professionals and patients) and the same distribution channels (pharmacies and hospital supply services).
Of most interest, the Court also addressed the impact of the counter specifications relating to “use in oncology”. Oncology treatment is complex, multi-factorial and usually involves a number of medicines to treat tumours, deal with side effects and relieve pain. Wording the specification of the mark applied for in a manner to exclude use in oncology did not negate the fact that the specification would cover pharmaceutical products which are closely connected with oncology under the earlier mark.
The General Court upheld the lower tribunals on the similarity of the marks. It concluded that the Board correctly found that there was a likelihood of confusion on the part of the relevant public, namely well-informed and particularly attentive oncologists, doctors and EU health care professionals, and cancer patients in the EU.
The Court held that the likelihood of confusion for healthcare professionals and cancer patients did not take the form of a likelihood that they might confuse the two goods, but rather that they could wrongly believe that the products were marketed by the same undertaking.
The attempt to avoid the earlier oncology medicine registration by expressly excluding use for oncology did not work. Practitioners should be mindful of drafting specifications in a manner that seeks to avoid prior registrations, as it does not mean that a finding of similarity will be avoided, even in situations where the relevant public are more highly attentive.