This article first appeared on WTR Daily, part of World Trademark Review, in (November/2014)

In Novartis AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-444/12, October 16 2014), the General Court (Fifth Chamber) has ruled on the likelihood of confusion between two marks by  considering active pharmaceutical ingredients and pharmaceutical effects which are usually unknown to consumers.
Novartis AG filed a Community trademark application for LINEX in Class 5 of the Nice Classification to cover “pharmaceutical preparations containing lactobacillus acidophilus”. Following publication, Tenimenti Angelini SpA filed an opposition under Article 41 of the Community Trademark Regulation (207/2009) on the ground that there was a likelihood of confusion with its earlier Italian national trademark LINES PERLA registered for, among other things, “ladies hygienic diaper; hygienic napkins for incontinents” in Class 5.

The Opposition Division of OHIM upheld the opposition on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the regulation. Following Novartis’ appeal, the Fourth Board of Appeal of OHIM dismissed the action, reaching the same conclusion as the Opposition Division.

In particular, the board found that the goods covered by the marks:

 “[…] were highly similar, since (i) they belonged to the same general category of goods for healthcare, (ii) their purpose was to be used in medical treatments or in surgical operations relating, in particular, to urinary incontinence, and (iii) they could contain lactobacillus acidophilus, a bacterium which is naturally present in the vagina and is beneficial in combating yeast infections. The absence of that bacillus in that part of the body can be remedied by diapers to which lactobacillus acidophilus is added in order to combat a possible yeast infection. In addition, the contested goods are sold, inter alia, in pharmacies and are targeted at end consumers with health problems linked to urinary incontinence.’ 
In addition, the board found that the contested goods were sold in pharmacies, among other places, and were targeted at end consumers with health problems in general, or health problems linked to urinary  incontinence. It concluded that the goods covered by both marks were marketed in Italian pharmacies, among other places.

The General Court annulled the board’s decision.

The General Court first noted (Paragraph 19) that it would focus on “the interdependence between the similarity of the signs and that of the goods or services designated” (see Laboratorios RTB v OHIM (GIORGIO BEVERLY HILLS) (Case T-162/01, July 9 2003), Paragraphs 30 to 33 and the case-law cited).

With regard to the purpose of the goods, the court noted as follows:

 ‘it does not appear either from the extract taken from the website of the University of Maryland, or from the description of the Linex Forte drug, that drugs containing lactobacillus acidophilus may be used to treat incontinence related problems. It rather follows from those documents that lactobacillus acidophilus is a stabiliser of intestinal flora, which adds beneficial bacteria to the gut and helps prevent nutritional deficiencies. The use of supplements containing lactobacillus acidophilus is also recommended in addition to a treatment against incontinence in order to improve health, as indeed are various vitamins, fruit and foods. However, lactobacillus acidophilus as such is not considered a medicinal product designed to treat incontinence or urinary tract or vaginal infections which may cause incontinence related problems. The mere fact that that bacterium is recommended in addition to a treatment against incontinence, in so far as its inclusion is recommended in a general change in dietary habits which a patient who suffers from incontinence should make, is not sufficient to allow the conclusion reached by the Board of Appeal that it has a medicinal or therapeutic purpose.” (Paragraph 46)

In addition, the court noted:

“It follows that the therapeutic benefits of lactobacillus acidophilus as a treatment for incontinence may not be considered to be either proven or well known. Therefore it must be considered that ‘pharmaceutical preparations containing lactobacillus acidophilus’ are not connected with the medical treatment for incontinence.” (Paragraph 48)

Therefore, the board had erred in finding that there was a likelihood of confusion. It is reasonable to ask whether the similar distribution channels of the goods – Italian pharmacies – might have sufficed to determine confusing similarity, in view of the concept of interdependence. In this case, the court carried out a deeper-than-normal analysis of issues related to pharmaceutical goods to apply the concept of “the interdependence between the similarity of the signs and that of the goods or services designated” – in particular, the fact that the similarity of the signs might be offset by the dissimilarity of the goods covered. In other words, the connection (or lack of) of the goods applied for with “urinary incontinence” was crucial to assess the likelihood of confusion between the designations LINEX and LINES in the pharmaceutical distribution channel.