When the relevant public is relatively sophisticated, just how different do two brands have to be to avoid being confusingly similar? The EU General Court considered this and other issues in a case where Novartis AG (ZIMBUS) opposed the grant of a CTM to Cadila Healthcare (ZYDUS) covering pharma and other products. Dr Catherine Lee reports.
Topic: Brands
Who: Cadila Healthcare Ltd v OHIM and Novartis AG (Case T-288/08, 15 March 2012)
Where: European Union
When: March 2012
Law stated as at: 3 April 2012
What happened:
On 18 July 2003 Cadila Healthcare Ltd filed a Community trade mark (CTM) application for the word 'ZYDUS' in Class 5 for, inter alia, 'pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, … disinfectants; … fungicides …’.
The trade mark was accepted and published on 10 May 2004. On 3 August 2004 Novartis AG lodged a notice of opposition in respect of the goods listed above on the basis of its earlier registered CTM for 'ZIMBUS' (2356954) in Class 5 for ‘pharmaceutical preparations’.
On 31 May 2007, the Opposition Division upheld Novartis's opposition in respect of ‘pharmaceutical, veterinary and sanitary preparations’ and ‘fungicides’, but rejected it in respect of ‘dietetic substances adapted for medical use’ and ‘disinfectants’. Cadila appealed. The OHIM Second Board of Appeal (the Board) upheld the appeal in respect of ‘fungicides’. However, the Board confirmed the decision of the Opposition Division and upheld Novartis's opposition in respect of ‘pharmaceutical, veterinary and sanitary preparations’. Cadila appealed to General Court of the European Court of Justice (Fifth Chamber) against the Board's view that:
1. the specification of goods in the two marks were identical or highly similar;
2. the trade marks were visually dissimilar but phonetically similar and had no meaning conceptually; and,
3. there was a likelihood of confusion between the two trade marks in respect of ‘pharmaceutical, veterinary and sanitary preparations’.
The Court dismissed Cadila's appeal by deciding as follows:
1. Comparison of the goods
The Court found that the goods were in part identical and in part very similar (at [45]). It was not controversial that ‘pharmaceutical preparations’ in both trade marks were identical (at [41]).As for the ‘veterinary preparations’ in Cadila's application, the Court agreed with the Board that ‘pharmaceutical preparations’ in Novartis's CTM was a broad and generic category which included both pharmaceutical preparations for human use and those for veterinary use (at [42]). Cadila's argument that ‘pharmaceutical preparations’ in Class 5 covered exclusively goods intended for the treatment of human beings was rejected (at [43]).
Then, agreeing with the Board, the Court found 'a relatively high degree of similarity' between ‘sanitary preparations’ in Cadila's application and 'pharmaceutical preparations' in Novartis's CTM (at [44]). This was because the categories of goods were aimed at the same public (health care professionals and end consumers) and had the same intended purpose — use in medical treatment or in a surgical operation. They are also the same in nature, given that they are perceived by consumers as goods belonging to the same general category of goods for health care. Further, they were closely complementary, in so far as certain sanitary preparations for medical use, such as antiseptics or antibacterial lotions, may prove to be indispensable when certain pharmaceutical preparations are administered. Finally, they may be made by the same economic operators (pharmaceutical companies) and are sold in the same establishments such as pharmacies and supermarkets.
2. Comparison of the trade marks
The Court found that the trade marks were similar overall (at [57]). Like the Board, the Court agreed this was because they had a certain degree of visual similarity and, at least for part of the relevant public, a strong degree of phonetic similarity, and that they have no meaning conceptually.
As to visual similarities, the Court pointed out (at [52]) that trade marks ZIMBUS and ZYDUS consisted of a single word comprising almost the same number of letters. Both trade marks began with the same letter ‘z’ and ended in the same group of letters ‘us’. Further, the letters ‘b’ (in Novartis's CTM) and ‘d’ (in Cadila's application) which directly preceded that group of letters were themselves very similar. Consequently, in visual terms, the only notable difference between the respective trade marks was the presence of the letters ‘i’ and ‘m’ (in Novartis's CTM) and of the letter ‘y’ (in Cadila's application). In the context of the overall visual assessment of both trade marks, that difference was not, however, sufficient to preclude all visual similarity between both trade marks.
As to a phonetic comparison, the Court highlighted (at [54]) that: each trade mark consisted of two syllables; in several European Union languages, the letters ‘i’ and ‘y’ were pronounced identically (with the result that both trade marks began with the same sound ‘zi’); the first syllables of both trade marks ('zim’ and ‘zy’) were very close phonetically in so far as the sound produced by the letter ‘m’ at the end of the first syllable of Novartis's CTM was absorbed by that produced by the consonant and more audible ‘b’; and that both trade marks ended in the same sound ‘us’ (even though the group of letters ‘us’ were preceded by a different letter, the letter ‘b’ in Novartis's CTM and by the letter ‘d’ Cadila's application, that difference will go unnoticed by most consumers since it affects the second syllable of each trade mark and was not the syllable on which the main stress fell).
Thirdly, as regards the conceptual comparison, the Court agreed (at [56]) with the Board that neither trade mark was conceptually comparable because neither had a meaning which linked it to a specific concept.
3. Likelihood of confusion
The Court agreed with the Board in finding that there was a likelihood of confusion (at [62]). This was consistent with the Court's earlier decision that the specification of the goods were in part identical and in part very similar and that the trade marks were similar overall.
The Court considered the relevant public in some detail (at [30] to [36]). As for pharmaceutical preparations, the relevant public’s level of attention was relatively high. This was the case, even where pharmaceutical preparations were available to consumers over the counter, since those goods related to their health. Likewise, the relevant public displayed a relatively high level of attention with regard to veterinary preparations because they affected the state of health of animals.
Lastly, the relevant public’s level of attention in respect of sanitary preparations, without being high, was above average, since those preparations included goods intended for both everyday use and medical use. Such a conclusion was borne out by the fact that Novartis's CTM was endowed with a higher than normal degree of distinctiveness as it was a created and invented sign with no particular meaning.
Cadila's argument that the phonetic similarity between the trade marks was of limited significance because pharmaceutical preparations and sanitary preparations were not generally purchased orally was rejected (at [63]). This was because the trade marks still displayed a certain degree of visual similarity (at [66]).
Why this matters:
It is well known that care needs to be taken with pharmaceutical names so that consumers do not confuse two similarly named products and take the wrong medicine by mistake. This case is useful for the thorough and systematic way in which the Board and Court approached the consideration of two trade marks which were for intended pharmaceutical related products. It also highlights that pharmaceutical companies must take extra care to ensure that their product names are distinctive from those already on the CTM register.
