Mind the gap! Is GC's approach detached from practice?

DELTA and DELTA PORTUGAL

In case T 218/12, Micrus Endovascular LLC sought to register the word mark DELTA in class 10 for medical and surgical devices, namely, microcoils used for endovascular surgery for the treatment of aneurysms.

The application was opposed on the basis of earlier registered rights arising from a Portuguese and an international registration for DELTA PORTUGAL protected for pharmaceutical products in class 5.

The opponent claimed a likelihood of confusion under Article 8(1)(b) of Council Regulation (EC) no 207/2009 on the Community trade mark (CTMR).

The applicant requested proof of use as the earlier rights were more than five years old. The use submitted showed use of the mark which was deemed sufficient to support the earlier rights.

Surprisingly, at least to some, the Opposition Division held that the goods were "similar to a certain degree" and the marks at issue were "identical", and thus concluded there was a likelihood of confusion.

The applicant appealed to the Board of Appeal (BoA) which held that:

1. Use of the earlier mark was sufficiently close to the mark as registered to be acceptable. The word PORTUGAL could effectively be ignored because its inclusion had only been to meet a national requirement at the time of registration for pharmaceutical products.
2. The use was across a wide spectrum of pharmaceutical products.
3. The relevant public should be restricted to professionals.
4. The two sets of goods were different "in nature"; however, they could be intended for the same public and distributed through the same distribution channel. Also, because a single pharmaceutical company could consist of a number of different business divisions, "it was not beyond the bounds of possibility for goods in class 5 and goods in class 10 to be produced by the same company and, as a result, to have the same commercial origin." This is true across lots of sectors, including, for example, retail stores but is not a reason in itself to find similarity, we would suggest. "There were cases where a medical treatment was complementary to the surgical operation" and thus "the goods in question were - at least to a certain extent - similar, given that they coincided with regard to their relevant public, distribution channels and commercial origin, and that they were complementary in terms of their use". This stretches the previously accepted definition of complementary goods by quite a long way, as discussed further below, and again is an erroneous conclusion in our view.
5. Notwithstanding the fact that the relevant public had a high level of attention, there was a likelihood of confusion.

The BoA thus dismissed the appeal in its entirety.

The applicant appealed to the GC and argued that the healthcare sector is complex and that there are distinct market segments present, with distinct consumers, such that the goods in question would not be seen as similar.

Complementary nature of the goods

The GC considered the requirements for complementarity, namely goods between which there is a close connection, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking (para 52). The example often given is that bread and butter are not complementary due to the fact that whilst often used together, one is not indispensable without the other (see useful links at the end of this article for a link to our previous article on this subject).

The GC also confirmed that goods may be regarded as complementary in terms of their function or if they belong to a single product family which allows them easily to be regarded as components of a general range of products capable of having a common commercial origin (para 67).

The GC felt both would apply here and because they are co-manufactured by certain undertakings, namely, certain pharmaceutical conglomerates which are able to cover a number of areas within the healthcare sector, "it must be found that there is a certain connection between the goods under comparison" (para 68). Again, it is difficult to see the court's reasoning in concluding that pharmaceuticals are indispensable for the use of medical apparatus are indispensable without the other.

Conclusion

The GC rejected the applicant's arguments stating:

Notwithstanding the different nature of the goods in question and the fact that there are differences between their distribution channels, the BoA did not err in finding that, by reason of their similar commercial origins and complementary nature, the goods at issue were - at least to a certain extent - similar (para 71).

Large hospitals are often organised in such a way that orders placed by or on behalf of the various professionals working there for medicines, equipment and specialised work tools are centralised, sometimes for a number of units within a single hospital" (para 62).

Where the signs in question are identical or simply highly similar, it must be held, in view of the rule set out in GIORGIO BEVERLY HILLS...that the different factors to be taken into account are interdependent, that the Board of Appeal did not err in concluding that the possibility of a likelihood of confusion between the marks at issue could not be excluded, notwithstanding the high level of attention of the particularly specialised relevant public concerned(para 81).

The text in bold italics above is a direct quote from the court which, far from emphatically concluding that confusion would be likely to arise, simply asserts that such a result cannot be completely ruled out.

Comment

The practical issue here is that whilst the applicant may ultimately not succeed in securing a registration for its DELTA trade mark, will its use for such specialised medical and surgical apparatus really result in infringing use of the opponent's trade marks? What harm will the opponent have suffered? Even if on balance there is held to be a tenuous link between the two sets of goods, will the opponent's business really suffer in practice?

The global assessment that is meant to sweep up all of the various factors taken into consideration in assessing whether confusion will arise seems to have been given pretty short shrift here. First, the opponent's mark arguably was not used as registered and nor could it be considered strictly identical to the mark applied for. Second, the opponent can hardly claim exclusivity to the word mark DELTA across great swathes of the Nice Classification - DELTA does not fall into the same category of marks such as EXXON or PEPSI.

Accordingly, despite there not being any claim of dilution or an enhanced distinctive character acquired though use, the GC still concluded there existed a likelihood of confusion on the part of the specialised professionals purchasing and using goods in this sector.

One can only hope that the applicant will appeal this judgment to the Court of Justice of the European Union (CJ) which, although it only considers points of law, can perhaps knock a little commercial sense into the lower court and OHIM. Research of cases before OHIM and the UKIPO show that consistently, more often than not, these two sets of goods are found to be similar, so perhaps it is the author who is out on a limb here and needs to step back in line!

Useful links

Full decision of Micrus Endovascular LLC v OHIM, Case T-218/12, 10 September 2014: http://dycip.com/Micrusvohim