Tillotts Pharma AG
21 June 2013
18 November 2009
Tillotts Pharma AG (the "Applicant") applied for the EU trade mark XENASA in class 5 which included pharmaceutical preparations, namely in relation to gastrointestinal disorders and conditions, Ferring BV (the "Opponent") filed an opposition based on their earlier EU trade mark registration for PENTASA (the "Earlier Mark") covering "pharmaceutical products and substances".
The General Court has disagreed with both the EUIPO and the Board of Appeal and found that there was no likelihood of confusion between XENASA and PENTASA.
The Board of Appeal held the relevant public for both marks would be a mix of medical professionals and patients as end-users, which was not disputed by either party. As is common, the level of attentiveness for medical products was held to be high. The EUIPO tried to argue that as XENASA covered a wide category of goods, the level of attentiveness would at most be above average. This was rejected by the General Court, which agreed with the Board of Appeal.
A broad term will encompass a specific term and a specific term will come within a broad term. Therefore, the more specific goods within XENASA are highly similar to the broad "pharmaceutical products and substances" covered by the PENTASA mark.
The General Court held that a distinction must be made between end-users who would perceive the suffix ASA as a reference to the active ingredient 5-asa or mesalazine and those that would not. Those that were prescribed XENASA for gastrointestinal health issues would not necessarily be familiar with 5-asa or mesalazine.
The Board of Appeal held that as 5 out of 6 letters were identical that the marks were of average visual similarity. The Applicant argued that as X is less common in the languages of the EU, this letter has a greater impact than a more common P or T. The General Court held that for those who were not familiar with ASA than the marks have a lower than average degree of visual similarity but for those familiar with ASA, this part of the trade mark will be less distinctive and therefore, the marks would have a low level of similarity.
The Applicant argued that phonetic similarities were less important as these drugs would be prescribed by a doctor and not verbally asked for. This was rejected by the General Court. The phonetic considerations should be given equal weight. The General Court held that the marks were of low phonetical similarity for both those who know ASA and those that do not. Although they did consider that the users would pronounce XENASA differently, with those not familiar with ASA pronouncing it as XE-NA-SA and those familiar with ASA pronouncing it as XEN-ASA.
The relevant public was subdivided again when the General Court considered the conceptual similarities 1) those who were not familiar with ASA would have a low level of conceptual similarity 2) those who are familiar with ASA but do not know that XEN comes from the Greek word xenos or that PENT comes from the Greek prefix PENTA, would also have a low level of conceptual similarity and 3) for those who are familiar with ASA and do know Greek there would be a higher degree of conceptual difference.
The General Court concluded that for end-users not familiar with ASA, there was no confusion. For those who are familiar with ASA but do not know Greek, there is some conceptual similarity but still no confusion. Even for those that are familiar with ASA and do know Greek, there is still no confusion.
However, the war rages on and the Applicant, not content with seeing off the opposition, then sought retaliation by filing a cancellation action against the Earlier Mark for non-use as it is more than 5 years. The EUIPO upheld a partial cancellation and PENTASA remains registered for a much limited range of goods.
Case Ref: T-362/16