In Alcon Inc v Of Office for Harmonisation in the Internal Market (OHIM) [2005], a mark was refused registration because the public was likely to confuse the mark with another similar mark.

In 1998, Alcon filed an application for registration of the word mark TRAVATAN in respect of goods within Class 5, in particular ophthalmic pharmaceutical preparations.

In 1999, Biofarma SA filed an opposition against registration of TRAVATAN, arguing that there would be confusion with the word mark TRIVASTAN, registered in Italy in 1986. This earlier trade mark was also registered under Class 5 covering pharmaceutical, veterinary, hygiene products and others.

In compliance with Article 42 of Regulation No 40/94, Alcon requested that Biofarma furnish proof that the TRIVASTAN mark been put to genuine use in Italy. Biofarma sent the requested documents to OHIM, demonstrating genuine use of TRIVASTAN in Italy.

In September 2001, the Opposition Division of OHIM found that use of TRIVASTAN was proven in respect of a pharmaceutical product within Class 5. The Opposition Division therefore refused registration of TRAVATAN on the grounds that there was likely to be confusion because of the visual and phonetic similarities between the marks. Alcon appealed this decision to the Third Board of Appeal who also rejected the appeal on the same grounds as the Opposition Division. Alcon then applied to the Court of First Instance to annul the decision.

Alcon claimed that:-

Article 42(2) and (3) had been infringed because Biofarma failed to submit evidence of actual use rather than potential use of TRIVASTAN in respect of ophthalmic products; and

there has been an infringement of Article 8(1)(b) because the goods at issue were not sufficiently similar.

The Court of First Instance ruled that:-

the evidence submitted by Biofarma demonstrated genuine use of TRIVASTAN was in respect of a medicinal product to treat vascular disorders of the eye, and it would be superfluous to require proof that the product was actually used by patients for this purpose;

a likelihood of confusion results if the public might believe that the goods or services in question come from the same company;

a likelihood of confusion is assessed based upon the perception of the public of the marks and goods and services in question; and

the signs in question were visually and phonetically similar and there was a high degree of similarity between the products which would result in a likelihood of confusion.

The application was therefore dismissed.

Comment: Ensure that a sought trade mark will not be confused with another mark in regards to the type of product or actual mark.

Email: enquiries@rtcoopers.com

RT COOPERS, 2006. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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Rosanna Cooper

Dr Rosanna Cooper BSc (Hons); CSci CChem MRSC; CChem FRSC; Dip Intellectual Property Law and Practice (Bristol), Solicitor; Attorney-at-Law (Grenada).

Dr Cooper is the managing partner of RT Coopers, Solicitors based in the City of London, England. She specialises in intellectual property (IP), biotechnology, pharmaceuticals, technology transfer and data protection. Dr Cooper was a partner in a West End firm in London and a senior lawyer with several City law firms before establishing RT Coopers. Dr Cooper studied for her Ph.D. in organic and medicinal chemistry at Kings College, University of London and pursued her postdoctoral research with SmithKline Beecham (now Glaxo SmithKline). She later worked as a senior pharmaceutical and paper chemist for Eli Lilly and Hercules respectively. Dr Cooper now advises international clients on IP in relation to a range of industries including, the biosciences, chemical sciences and pharmaceutical industries. Her role also extends to drafting, advising and negotiating commercial contracts, licences, joint ventures, collaborations, mergers and acquisitions especially the intellectual property and IT aspects of such corporate transactions. Dr Cooper advises start-ups, universities, spinout companies, small to medium sized enterprises and corporate clients.