CONFUSED? NOT REALLY; LAMENT FOR LOST GENERICS

Likelihood of confusion? Or mere possibility?

Yesterday the Court of First Instance of the European Communities (CFI) gave its ruling in Case T-154/03 Biofarma SA v OHIM, Bausch & Lomb Pharmaceuticals, Inc intervening. B&L applied to register as a Community trade mark the word mark ALREX, for 'ophthalmic pharmaceutical preparations, namely eye drops, solutions, gels and ointments used for the treatment of eye infection and inflammation’ (Class 5). Biofarma opposed, citing its earlier registrations of the word mark ARTEX in France, the Benelux and Portugal for 'pharmaceutical speciality used in the cardiovascular field; pharmaceutical, veterinary and sanitary products; material for stopping teeth, dental wax’ (also in Class 5) and alleging a likelihood of confusion. The Opposition Division upheld the opposition on the basis that both the marks and their respective goods were similar. The Board of Appeal disagreed, concluding that, while both parties' products fell within Class 5, there wasn't much similarity between them: those of B&L were for the eyes, while those of Biofarma weren't. The Board also thought there wasn't much similarity between the marks. Biofarma appealed.

The appeal succeeded and the Board of Appeal's decision was annulled. The CFI agreed that that the relevant consumers were medical specialists and general practitioners who would prescribe the respective products, also holding that those products were neither complementary nor in competition with one another. At this point, B&L must have been feeling quite comfortable about their chance of winning. However, the CFI held that, contrary to the Board's finding, there was a high degree of similarity between the marks themselves. This similarity was so high, the CFI felt, that even the relatively large gap between the products themselves could not prevent a likelihood of confusion.

The IPKat is unimpressed. This seems to him to be one of those cases that the Irish Patents Office keeps mentioning, in which 'likelihood of confusion' is confused with 'possibility of confusion'. He hopes that B&L will have the courage to carry on using its mark and call Biofarma's bluff. We might see then whether there really is a likelihood of confusion. Merpel's not so sure. You shouldn't try to provoke litigation, she says. Haven't you argued before that it's often cheaper and more prudent than to change to a new name rather than to fight over an old one?


Found quite by chance

While reading a recent issue of The Onion the IPKat stumbled across this link to the following delightful piece, posted on 15 April 1998:

NATION'S LAST THEMELESS RESTAURANT CLOSES

An era came to an end Tuesday when Pat's Place, the nation's last themeless restaurant, closed its doors in Dubuque. "We achieved a certain local notoriety for our unique non-themed food and unadorned atmosphere," said owner Patrick Baines, "but sales were sluggish, as most people would just come in to gawk at our photoless walls and mundanely named menu items like 'hamburger' and 'pancakes.' Then they would head over to the Rainforest Cafe, Hard Rock Cafe, Planet Hollywood, All-Star Cafe, Johnny Rocket's or Disney Cafe down the street." Once vacated by Baines, the building will become home to Dubuque's seventh Paddy O'Touchdown's Irish Sports Bar & Good-Tyme Internet Grill.

The point is this. When everything becomes branded, we lose sight of the generic. This process, the IPKat observes, is happening throughout Europe, wherever regular generic or descriptive terms keep ending up as Protected Designations of Origin or Protected Geographical Indications. Soon there won't be any generic cheeses, he wails.