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D Young & Co

Article 1: Looking Out for the Average Consumer Do They Need This Much Protection?

In the world of trade marks, the "average consumer" is an important figure. Any tribunal in Europe considering whether trade marks are likely to be confused must assess the issue from his perspective. It is now established that the hypothetical "average consumer" is reasonable well informed, observant and circumspect - by contrast with the "moron in a hurry" so memorably dismissed by the English Courts in the 'MORNING STAR" case some years ago.

The fact that the EU Court or tribunal itself is highly unlikely to comprise any members who could normally be described as "average consumers" does not appear to trouble the judiciary. However, it may be of concern to trade mark owners that their decisions are increasingly protective of such consumers' interests, at the expense of more liberal free trade concepts, especially when conflicting trade marks for pharmaceuticals are in issue.

Two recent Decisions, one by the European Court of First Instance and one by the European Court of Justice, both involving both conflicting pharmaceutical marks, illustrate this trend. The first Decision, ECFI (case T/256/04) involved the trade mark RESPICUR, applied for in respect of "therapeutic preparations for respiratory illnesses" and opposed by the owners of RESPICORT.

The Opponent's mark was subject to the use requirement; the Board of Appeal found that use had only been shown for "multi-dose dry powder inhalers containing corticoids, available only on prescription". Likelihood of confusion with the Applicant's mark was therefore to be assessed in this more limited context.

As a consequence of this restriction, the Board of Appeal considered that the relevant public were professional sin the medical sector rather than end consumers and concluded that there was no likelihood of confusion. Such professional were, by virtue of their knowledge and experience, able to distinguish between the two marks. The fact that the prefix "respi" had a clear reference to the intended therapeutic function of the goods and the suffix "cort" had a reference to the active ingredient, namely corticoid steroids, was a further distinguishing point.

On Appeal, the ECFI reversed these conclusions, finding firstly that the Board of Appeal had wrongly excluded the end consumer from the assessment of the relevant public when considering likelihood of confusion. They found that, while some therapeutic preparations for respiratory illnesses were available only on prescription, others could be purchased over the counter and that the Board of Appeal had made too narrow an assessment of the potential range of customers.

On the other hand, since patients with a respiratory illness are often seriously unwell, they also found that any end consumers in this case would generally show a higher than average level of attention when purchasing their medication.

Stating that the marks must be considered as a whole (in accordance with the standard text), the ECFI nevertheless broke them into their constituent elements before concluding that medical professionals would be likely to appreciate that the "cort" suffix in the Opponent's mark had a more definite meaning for the active ingredient than that in the Applicant's RESPICUR mark.

However, the ECFI considered that the end consumer, who was unlikely to be aware of this meaning, was bound to be confused on all fronts, despite being (as previously indicated) more highly attentive than usual when purchasing pharmaceuticals or medication generally over-the-counter.

It may be questioned whether a mark which is of weak distinctive character should be given such broad monopoly protection, particularly if the prospective purchase (while being a member of the general public) is paying more attention than usual to the brand name on the product.

The trend to "over-protection" was also followed by the ECJ in their Decision (case C-412/05P) involving the trade mark TRAVATAN. This mark was filed for "opthalmic pharmaceutical products" and opposed by the proprietor of TRIVASTAN, registered broadly in class 5 for the entire international class heading; including "pharmaceuticals".

The Opponent's mark was again subject to proof of use. The Opposition Division found that the evidence of use filed concerned "peripheral vaso-dilator intended to treat peripheral and cerebral vascular disturbance and vascular disorders of the eye and ear". These goods were potentially similar to those for which registration was sought by the Applicant. Both sets of goods were prescription only.

Both OHIM's Opposition Division and the Board of Appeal had no difficulty in finding the TRAVATAN AND TRIVASTAN were confusingly similar marks. When reaching their conclusions on likelihood of confusion, the relevant public were considered to be not only medical professionals (who would be dispensing the goods in each case) but also the end consumer.

The CFI then upheld the Board of Appeal's decision, following much the same reasoning, and the Applicant sought to overturn their findings on further Appeal to the ECJ. One of the bases of this further Appeal was that the definition of the relevant public should have been restricted to "healthcare professionals" since end users have no choice when they buy goods issued on a Doctor's prescription.

The ECJ was not happy with this suggestion, concluding instead that the fact that intermediaries such as healthcare professionals are liable to influence or determine the choice made by end consumers did not by itself exclude likelihood of confusion on the part of those end consumers.

According to them, the fact the whole process of marketing the goods of issue was aimed at the end user's acquisition of them meant that the perception of the mark by the end user was also relevant.

The ECJ contrasted this situation with one where the goods, although pharmaceuticals, were not dispensed to end users in retail premises but merely supplied to medical specialists in a hospital environment; in that case the exclusion of end consumers from the assessment of likelihood of confusion was quite justified.

In TRIVASTAN/TRAVATAN the European Court did not state that the end consumer would be paying more attention than normal to the purchasing transaction because their health was in issue.

Since Appeals to the ECJ relate only to points of law, the Court was not prepared to reconsider the findings of fact by the CFI (and lower tribunals) on whether the marks themselves were visually, phonetically or conceptually similar but they did find that the CFI had failed to consider systematically why healthcare professionals (as opposed to the average consumer) might confuse the two marks.

However, because the ECJ had also found that the relevant public included end consumers (and they accepted the lower Courts' findings on potential confusion to this category of consumers) the ECJ upheld the rejection of the Applicant's mark overall.

So where does this leave proprietors of pharmaceutical brand names? It seems that unless the environment into which their goods will be supplied is clearly restricted to a hospital or clinic where they will be handled only by specialist healthcare professionals, the perception of the end consumer is always going to be relevant when likelihood of confusion is discussed.

This inclusive approach will now extend to cases where the goods are available only on prescription, and this fact is made clear in the specification.

Interestingly, neither of these decisions comments explicitly on the potential adverse effects of actual confusion arising between competing pharmaceuticals which may be mis-prescribed or mis-dispensed, with harmful results. This may be implicit in the approach taken (and reflects extreme caution of the regulatory authorities, such as the EMEA, in this respect).

In practical terms, in a crowded market place, it seems that Applicants for pharmaceutical trade marks must aim high when it comes to picking new marks. Relying on the fact that an earlier right has a weak or descriptive prefix or suffix or that the product is only for sale on prescription will not be enough where the goods are generally similar in nature.

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