30. April 2018
The General Court has upheld a decision of the Board of Appeal that the marks Normon and Normosang, both covering pharmaceutical products, are confusingly similar.
The case highlights the need to provide focused and organised evidence in support of an opposition, as well as the fact that a decision will not necessarily be over-turned just because there are potential errors in the earlier body's ruling.
In 2013, the applicant, Recordati Orphan Drugs, filed an EUTM application for the mark NORMOSANG in respect of "pharmaceutical preparations containing human hemin for administration by injection or perorally for the treatment of hepatic porphyria" in Class 5.
The application was opposed by Laboratorios Normon, SA, on the basis of four earlier national trade mark registrations, the most pertinent of which was a prior Spanish registration for NORMON covering "pharmaceutical products", among other things, in class 5.
The General Court upheld the Board of Appeal's ruling of a likelihood of confusion, despite identifying certain potential errors in the Board's decision, holding:
The Board of Appeal was not necessarily wrong to include the general public, as well as healthcare professionals, in the definition of the relevant public. The applicant did not prove that patients suffering from hepatic porphyria are not involved in any way in the choice of treatment they undergo.
Moreover, the Board of Appeal based its decision on relevant consumers with a high level of attention, being the general public and even healthcare professionals. Accordingly, the inclusion of the general public would not have had any impact on the Board's decision. This highlights the needs to prove, with evidence, which categories of consumers make the purchasing choice.
The General Court agreed with the Board of Appeal that the marks in issue were similar to "an average degree" since they share the first five letters, as well as the letter 'n' at/towards the end of the marks. Although the marks differ by the inclusion of the "sang" element and the number of syllables, the relevant public normally attaches more importance to the beginning of words, which here were identical.
The Board of Appeal was perfectly within its power to hold that the marks in issue did not have conceptual meanings since those meanings were not completely clear. Even if the relevant public were to perceive the mark applied for as referring to normality ("norm") and the blood ("sangre" meaning blood in Spanish) and the earlier mark as referring to normality only (norm), it would not counter-balance – and may even accentuate - the visual and phonetic similarities between the marks. Since the goods in question where identical, there was a likelihood of confusion.
The fact that the Board of Appeal had (wrongly) referred to the opponent as having a family of marks was irrelevant since it did not have a bearing on the Board's decision.
The applicant argued that the marks in question had co-existed peacefully in the market-place and hence there was no likelihood of confusion. The General Court reiterated that, in order to prove peaceful co-existence, the applicant must establish that the marks have indeed co-existed in the relevant market-place and that there is no likelihood of confusion, which implies that the public is aware of the fact that the marks belong to different undertakings.
While the General Court agreed that the relevant-market place was Spain only (and not, as the Board of Appeal had said, the whole of the EU), there was not even sufficient evidence of co-existence, let alone peaceful co-existence. Sales volumes in Spain were very low and the evidence did not address the manner in which the relevant public had been exposed to the marks, in particular, that they recognised the marks as belonging to different undertakings. This gave weight to the opponent's submission that it was not even aware of the applicant's goods.
The fact that market authorisations had been granted for both products was irrelevant since the marketing authorisation authority does not form part of the relevant public and the EUIPO is entitled to form its own view. This highlights the need to provide "a body of evidence" in support of a peaceful co-existence claim covering not just co-existence but the perceptions of the relevant consumer.
Lastly, it is worth mentioning that the General Court held certain parts of the applicant's submissions and evidence inadmissible.
The applicant had sought to bring in arguments previously submitted to the Opposition Division and Board of Appeal by referring to them in its application for appeal. However, it did not specify which paragraphs of the earlier submissions supported which claims.
The General Court pointed out that, while arguments may be supported and supplemented by reference to submissions previously filed, those arguments must be summarised sufficiently in the application itself and the particular paragraphs in the earlier submissions in support of each argument must be clearly identified. That had not been done here and so the arguments referred to had been ignored.
Likewise, it was not permissible for the applicant to bring in new evidence of fact before the General Court even if it merely confirmed, amplified or completed evidence already filed.
This case highlights the importance of gathering clear and focused evidence on matters such as who constitutes the relevant public and peaceful co-existence. It is also a useful reminder that applicants must properly particularise their arguments, even on appeal, and cannot seek to introduce previous submissions on a whole-scale basis.
While it is unlikely that the outcome of this particular case would have been different, it is nonetheless a useful reminder of the need to submit clear, focused and properly particularised evidence.
Case Ref T-103/17