The EU General Court recently found that Novartis failed to prove its series or family of earlier trade marks are likely to be confused with similar Astrazenca trade marks. In this article we examine two related decisions of the General Court which align with the findings of EUIPO Board of Appeal (the Board).
Relative grounds for infringement
Novartis appealed the Board’s decision refusing Novartis’ oppositions concerning:
- The level of attention of the relevant public,
- The comparison of the signs at issue,
- The enhanced distinctiveness, acquired through use, of the earlier marks and
- The global assessment of the likelihood of confusion.
Level of attention: medical professionals v the general public
Whilst Novartis agreed with the Board’s finding that the relevant public was made up of medical professionals and the general public, Novartis disagreed that these groups displayed the same high degree of attentiveness, or awareness. Novartis argued that a distinction should be made between the quality of attention of these groups. Referring to the Novartis and EUIPO (TOLPOSAN) decision, the General Court held that:
“irrespective of their training and professional activity, the average consumers of the goods concerned, which have in common the essential purpose of being marketed on the recommendation of or through a medical professional and have a direct impact on health, are reasonably well informed and reasonably observant and circumspect and have a high level of attention, whether they are members of the general public or professionals.”
The General Court also dismissed Novartis’ arguments regarding the fact that the general public was made up of the elderly and younger persons on the basis that there was no evidence that the goods were directed exclusively at these groups. Moreover, the Court held that there was no evidence that the level of attention of the elderly was lower, and pharmaceutical preparations are purchased by adults on behalf of younger persons.
Comparison of the marks at issue
Novartis’ Earlier Marks
ONBREZ, DAYBREZ, BREZILIZER and BREEZHALER
ONBREZ, BREZILIZER and BREEZHALER
In support of its claim, Novartis asserted that the letter groups ‘haler’, ‘lizer’ and ‘trev’ would be understood by the relevant public as abbreviations of ‘inhaler’, ‘nebulizer’ and ‘triple-therapy’.
In line with well-established principles, the General Court highlighted that a comparison must be made between the marks in question as a whole. This does mean that the overall impression conveyed to the relevant public may not be dominated by one or more components of the mark.
The General Court agreed with the Board’s rationale in the disputed decisions that the marks at issue were not composed of elements that would have any meaning to non-English or to the English-speaking relevant public. It held that Novartis had not established a link between the letter groups and the abbreviations supporting its claim. As a result, the General Court held that in this case no dominant or distinctive element can be identified.
The General Court carried out a visual and verbal comparison of each of the earlier cited marks compared with AstraZeneca’s marks and found either a low level or no similarity between the marks. Key to this finding is that the General Court held that the terms ‘brez’ and ‘breez’ are not distinctive and dominant, contrary to Novartis’ argument.
In light of the fact that the marks have no meaning to the relevant public, the General Court found that there was no conceptual similarity.
Interdependence and cumulative conditions for likelihood of confusion of series marks
Disputing the Board’s findings, Novartis argued the fact that the term ‘brez’ appeared in both the AstraZeneca marks and the earlier marks could lead the relevant public to consider that the mark applied for forms part of a single group of marks. It argued that it is common for pharmaceutical groups to use a single distinctive element in respect of a certain area of therapy.
On finding a low level of confusion, the General Court noted that its finding might be different if Novartis demonstrated the existence of a family of marks. In line with the Il Ponte Finanziaria v OHIM – Marine Enterprise Projects BAINBRIDGE decision, a series exists when:
“they reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of assessing whether there is a likelihood of confusion”
To prove a likelihood of association claim, the General Court said the following cumulative conditions must be met:
- the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’; and
- the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.
In this case, the Court noted that the earlier marks do not follow a common sequence, the first syllables of the earlier marks are ‘brez’, ‘breez’, ‘on’ or ‘day’. As a result, Novartis had failed to demonstrate that its marks belonged to a family. In addition, Novartis had not shown that evidence of use on the market in support of its claim.
Takeaway: use that mark
This decision makes it clear that to be capable of fulfilling the first requirement of likelihood of association of a series mark, the owner of the marks in question must be able to demonstrate that the marks in the series are in use on the market. In the absence of this evidence whether it be use of all or at least use of some in the claimed series, such a claim will not be successful.
Moreover, genuine use of trade marks is crucial. Failure to use a trade mark in the registered form may mean that the owner runs the risk of losing trade mark rights necessary for a cancellation claim. For more information on successfully protecting your organisation's intellectual property rights, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.