Today the Court of First Instance gave its ruling in Case T-256/04 Mundipharma v OHIM, Altana Pharma (RESPICUR). The appeal follows the Board of Appeal's refusal to uphold an opposition to a Community trade mark application brought by the holder of a national word mark RESPICORT for goods in Class 5 against an application to register RESPICUR for "therapeutic preparations for respiratory illnesses" in the same Class. The Board of Appeal held that the opponent failed to prove use of the earlier mark to the extent necessary, and that account should be taken only of the use for "multi-dose dry powder inhalers containing corticoids, available only on prescription". As to the issue of whether there was a likelihood of confusion, the Board found that the goods in question were identical and that there was a certain similarity, offset by marked differences between the two signs. The relevant public groups in respect of the two marks overlapped only in the professional sector, which was thus the relevant public in the present case. Taking all of this into account the Board concluded that there was no likelihood of confusion between RESPICUR and the earlier RESPICORT.
Before the CFI the opponent relied on a single plea in law, alleging that the Board misapplied Article 8(1)(b) of Regulation 40/94 in finding that there was no likelihood of confusion between the mark applied for and the earlier mark. It relied on five factors: the limitation of the goods taken into account for the earlier mark, the determination of the relevant public, the similarity of the signs, the distinctive character of the earlier mark and the fact that the Deutsches Patent- und Markenamt had found that there was a likelihood of confusion between the signs.
The CFI found for the opponent and annulled the Board's decision. Crucial was the Board's over-narrowing of the scope of use that it staked out for the earlier mark. Said the CFI:
"27 ... the Board ... held that the earlier mark was to be taken into consideration only in so far as it covered goods the genuine use of which was not contested. It thus defined a sub-category corresponding to those goods, namely ‘multi-dose dry powder inhalers containing corticoids, available only on prescription’.The IPKat thinks this is right. Merpel says, wouldn't it be good if OHIM and the EU's regional and national trade mark granting authorities all got together and made a joint statement concerning practice to be followed by all of them when dealing with (i) proof of use, (ii) who is the relevant consumer, (iii) the status of descriptive prefixes and suffixes, (iv) likelihood of confusion/association and (v) all other issues that cause specific headaches when dealing with pharma and healthcare marks ...
28 That definition is incompatible with Article 43(2) of Regulation 40/94, as interpreted in the light of ALADIN, and applicable to earlier national marks pursuant to Article 43(3) of that regulation.
29 The Court notes in this respect that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a sub-category of goods or services.
30 The purpose and intended use of a therapeutic preparation are expressed in its therapeutic indication. However, the definition employed by the Board ... is not based on that criterion as it does not state that the goods in question are intended for the treatment of health problems and does not specify the nature of those problems.
31 Moreover, the criteria chosen by the Board ..., namely the dosage form, the active ingredient and the obligation to obtain a doctor’s prescription, are, as a rule, inappropriate for defining a sub-category of goods as contemplated in ALADIN, as the application of those criteria does not fulfil the ... criteria of purpose and intended use of the goods. ... [A] given medical condition can often be treated using a number of types of medication with different dosage forms and containing different active ingredients, some of which are available over-the-counter whilst others are available only on prescription.
32 It follows that, in failing to take into account the purpose and intended use of the goods in question, the Board ... made an arbitrary choice of sub-category of goods.
33 ... the sub-category of goods covering those the genuine use of which has not been contested must be determined on the basis of the criterion of therapeutic indication.
34 The sub-category proposed by the [CTM applicant], ‘glucocorticoids’, cannot be accepted. That definition is based on the criterion of the active ingredient. ... such a criterion is not generally appropriate by itself for defining sub-categories of therapeutic preparations.
35 By contrast, the definition proposed by the applicant and OHIM, namely ‘therapeutic preparations for respiratory illnesses’, is appropriate in two ways: first, it is based on the therapeutic indication of the goods in question and, second, it allows for the definition of a sufficiently specific sub-category, as contemplated in ALADIN.
36 In the light of the foregoing, the Court finds that the earlier mark must be deemed to have been registered, for the purposes of the present case, for ‘therapeutic preparations for respiratory illnesses’".