Trademarks - 'Likelihood of confusion'

Omnicare Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs): General Court of the European Union (First Chamber) (Judges Azizi (President), Cremona and Frimodt Nielsen (Rapporteur)): 9 September 2011

Following from the related case of the same name, concerning the use of the mark 'Omnicare Clinical Research', [2011] All ER (D) 56 (Sep): in June 2000 the applicant company filed a Community trademark application, seeking to register the sign 'Omnicare'.

The services in respect of which registration was sought corresponded to the description 'conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals'. Opposition arose to the mark, based on an earlier German mark (the German mark), which appeared to read 'Omnicare', the first character of which was written in a stylised logo format.

That mark denoted services 'of organisation, business management and medical consultancy for medical practice, in particular for urological practice; distribution of literature and printed matter for doctors for advertising use, in particular urologists; organisation of lectures, seminars, expositions and fairs for doctors, in particular urologists'.

In December 2007, the Opposition Division rejected the opposition. The intervener, the Office for Harmonisation in the Internal Market, successfully appealed to the Board of Appeal (the Board). The applicant appealed to the General Court, submitting that the decision of the Board should be annulled and alleging an infringement of article 8(1)(b) of Council Regulation (EC) 207/2009.

The applicant submitted that, inter alia: first, in a document of December 2005, the German Trade Mark and Patent Office (the Trade Mark Office) had stated that the name of the earlier mark was Minicare, and that the inclusion of the first letter 'i' had been a typographical error.

It submitted that the first character of that mark was not an 'O' but a stylised graphic, and that having been viewed as such by the Trade Mark Office would also be viewed in the same way by the public. Secondly, it submitted that the Trade Mark Office had perceived the German mark, when it had been registered, as being 'Minicare', and that the first letter of the mark had been 'M' and not 'O', and that consequently the German mark had been understood as such when it had been seen for the first time on the market.

Thirdly, it submitted that the services at issue and their consumers were fundamentally different, in that it did not offer research to urologists while the defendant did, and that the trade channels through which the services would be procured were different, so that the services would be neither in competition with each other, nor complimentary to one another. The action would be dismissed.

(1) The limitation by the applicant in relation to urologists had not been formulated as meaning that its services would target services aimed at all doctors or health professionals except urologists, but meant that they would target services aimed at pharmaceutical companies and governmental or international organisations, excluding urologists.

However, the categories of persons at whom those services were aimed clearly did not include urologists and thus they could not be excluded. Consequently, the limitation relating to urologists was manifestly artificial.

It was further artificial to claim to be able to conduct 'clinical and laboratory research in the field of pharmaceuticals' and exclude urologists from the potential recipients of those services. Furthermore, urology was practiced by general practitioners as well as urologists, although the limitation by the applicant had not extended to general practitioners (see [86]-[92] of the judgment). The Board had also been right to consider that the services at issue were similar (see [93] of the judgment).

(2) On the evidence, the German mark had been perceived as being 'Omnicare' by the relevant public. The marks contained identical wording and would be perceived by the relevant public, who in the instant case would be made up of experts in the medical and pharmaceutical professions in Germany, as being identical and meaning 'total care'.

The stylised letter 'O' in the German mark was not visually striking and did not substantially alter the perception of the word. Phonetically, the signs were similar (see [45]-[47] of the judgment).

The marks at issue were similar both visually and phonetically, and were conceptually identical (see [50] of the judgment).