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PRAZOL, PREZAL ... nine years later

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The Court of Justice of the European Communities gave its decision on Tuesday in Case T?95/07 Aventis Pharma SA v Office for Harmonisation in the Internal Market, Nycomed GmbH, an appeal involving a Community trade mark opposition.

Back in 1999 the applicant (now Nycomed) sought to register as a Community trade mark the word PRAZOL for pharmaceuticals in Class 5. Aventis opposed, citing its own 1993 Benelux trade mark PREZAL for ?pharmaceutical, veterinary and hygienic products?, also in Class 5. The Opposition Division dismissed the opposition on the ground that Aventis had not proved sufficient use of its earlier mark. There then followed a game of ping-pong between the Opposition Division and the Board of Appeal, which eventually found that there was no likelihood of confusion among relevant consumers. Even though the goods in respect of each mark were identical, the marks had no particular meaning and the clear phonetic difference between them outweighed their low level of visual similarity. Aventis applied to have the Board'd decision annulled.

The Court of First Instance annulled the Board's decision. In its view the similarities between the two marks outweighed the dissimilarities. The fact that the relevant public consisted of end-consumers among others, whose level of attention could be considered to be above average, was insufficient, given the identical nature of the goods concerned and the similarity of the marks, to rule out the possibility that those consumers might believe that the goods came from the same undertaking or, from economically-linked undertakings. In the circumstances, since there was a strong visual and phonetic similarity between the marks and no meaning could be attributed to them which would enable end-consumers to distinguish between them, the marks very similar and a likelihood of confusion on the part of the relevant public could not be ruled out.

The IPKat feels that this is really a sorry tale. To take from 1999 to 2008 in order to establish whether PRAZOL and PREZAL are similar or not seems ridiculous. There must be a better way of dealing with these questions, particularly where healthcare issues such as consumers' ability to distinguish products and the need to ensure that products are brought to the market are at stake.

Full post as published by IPKat on October 23, 2008 (boomark / email).