In Scil Proteins GmbH v Office for Harmonization in the Internal Market (OHIM)(Case T- 87/07, November 12 2008), the Court of First Instance (CFI) has overturned a decision of the Board of Appeal of OHIM on the interpretation of class descriptions affecting the likelihood of confusing similarity between two trademarks.  

Indena SpA, a company specializing in extracting health benefits from plant extracts, filed an application for the registration of the device mark AFFILENE as a Community trademark (CTM). The application covered goods in Classes 1 and 5 of the Nice Classification. Scil Proteins GmbH opposed the application on the basis of its registered CTM AFFILIN. Scil's trademark covered the following goods in Class 5:  

“Pharmaceutical and veterinary preparations, except anti-epileptics; diagnostic and analysis preparations for medical and veterinary purposes; re-agents for medical and veterinary purposes; all the aforesaid goods, in particular containing antibodies or antibody-type proteins or parts thereof, including for purifying and stripping substances from mixtures.”  

In Class 5, Indena applied for “extracts of medicinal plants for use in the pharmaceutical, cosmetic and food industries, not for diagnostic purposes”.  

The Opposition Division of OHIM upheld the opposition. On appeal, the Board of Appeal held that the goods registered in Class 5 for the trademark AFFILIN were not confusingly similar to Indena’s goods in Class 5. The board held that these goods could not be confused because the description in the earlier registration was subject to the qualification that the goods covered were, “in particular”, biological preparations “containing antibodies or antibody-type proteins or parts thereof, including for purifying and stripping substances from mixtures”. The board also held that any similarity between the goods was offset by the fact that Indena expressly excluded plant extracts “for diagnostic purposes”.  

The Court of First Instance overturned the board's decision. The CFI noted that the lesser degree of similarity between the goods applied for might be offset by a greater degree of similarity between the marks. The CFI held that there was a high degree of similarity between the marks in the present case.  

The CFI also held that by including the words “all the aforesaid goods” in its Class 5 description, Scil had not qualified its description of goods in the manner found by the Board of Appeal. It went on to hold that the similarities between plant extracts (covered by the opposed mark) and biological preparations (covered by the earlier mark) were sufficient to create confusion. The CFI concluded that:  

  • the inclusion of the words “in particular” in the class descriptions of Scil's mark did not exclude a broader interpretation of the classes; and  
  • the expression “all the aforesaid goods” was designed merely to avoid repetition when drafting classes.

On that basis, the CFI concluded that the description of the goods covered by Scil's trademark concerned all biological preparations for laboratory analysis and diagnostics. This included those preparations which contained “antibodies or antibody-type proteins” and those which did not, despite the fact that this was not expressly provided for in the class description.  

The Board of Appeal took a very narrow view of the confusion that might arise between similar trademarks covering dissimilar goods. The CFI's decision will thus be welcomed by trademark owners. The decision, in line with other CFI judgments, highlights a reluctance on the part of the CFI to find that goods in the same class will not be confused (even if they are quite different) where there is a high degree of similarity between the relevant trademarks.