Case T-331/09

Novartis AG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for the Community word mark TOLPOSAN – Earlier international word mark TONOPAN – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Assessment of the likelihood of confusion – Attention level of the public

(Council Regulation No 207/2009, Art. 8(1)(b))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity between the goods or services in question – Criteria for assessment – Complementary nature of the goods

(Council Regulation No 207/2009, Art. 8(1)(b))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 207/2009, Art. 8(1)(b))

1.      So far as concerns the degree of attentiveness of the relevant public for the purposes of the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, the average consumer of the relevant goods is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attentiveness is likely to vary according to the category of goods or services in question.

As regards pharmaceutical products, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to end consumers, in cases where pharmaceutical products are sold without prescription, it must be assumed that those goods will be of concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect where those goods affect their state of health, and that these consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products. Thus medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect.

(see paras 23, 26)

2.      In order to assess the similarity of the goods or services within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned.

Goods such as medicines have the same nature (pharmaceutical products), purpose (treatment of human health problems), consumers (medical professionals and patients) and distribution channels (typically pharmacies). This is apparent from the goods at issue belonging to the same general category of goods: medicines. However, this is a very wide category and includes goods which may be different. Thus it must be concluded that medicines belonging to the same general category of goods only allow the finding of a low degree of similarity between all the medicines.

As the factors taken into account above cannot be used to distinguish different sub-categories of medicines, it is necessary to have regard to other factors, in order to properly assess the similarity between the medicines. These factors are, in particular, whether these medicines are in competition with each other or complementary, as well as their purpose and their specific intended use (treatment of specific health problems). In taking these factors into account, a medicine’s therapeutic indication is of decisive importance.

That specific nature of medicines has already been taken into account in the case-law which states that, since consumers are searching primarily for goods or services which can meet their specific needs, the purpose of the relevant goods or services 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. The purpose and intended use of a therapeutic product are expressed in its therapeutic indication.

Therefore, the fact that the goods at issue may be used simultaneously by the same consumer does not suffice for a finding that they are complementary. Goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.

(see paras 30, 35-37, 41)

3.      For the relevant public consisting of professionals in the medical sector and Austrian and Spanish end consumers, there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark between the word sign TOLPOSAN, for which registration as a Community trade mark is sought for ‘muscle relaxant medicines containing tolperison; muscle relaxant veterinary preparations containing tolperison’ within Class 5 of the Nice Agreement, and the word sign TONOPAN previously registered as an international mark with effect in Austria and in Spain for ‘analgesics which soothe pain, in particular in treating headaches and migraines’ in the same Class, taking into account the fact that (i) the goods at issue are only slightly similar and the trade marks at issue have an average degree of similarity and that (ii) the relevant public has a higher degree of attentiveness than average.

(see paras 29, 32, 58)