An EU IPO Case Study: ProctoLYSYAL v PROCOTOLIZIN
Summary
I always like to start at the end. No nasty surprises and you know what to expect. In this case study, the trade marks ‘proctoLYSYAL’ (EU) and ‘PROCTOLIZIN’ (Romanian) were found to be confusingly similar – resulting in a likelihood of confusion and a successful opposition for Fiterman Pharma Limited (in relation to the goods identified as identical, similar and similar to only a low degree – see the table below). This was despite recognition that PROCTO was a weak element in both marks.
Similarity of Marks
The opposition was based on the earlier right PROCTOLIZIN for class 5 goods only – registered specifically for ‘medicinal products for human and veterinary use for haemorrhoids and anal fissures’. The opposed mark was ‘proctoLYSYAL’, applied for in respect of goods in class 1 (chemical products), class 3 (cosmetics) and class 5 (pharmaceuticals).
The relevant public was deemed to be made up of both the public at large, and medical professionals with an average to high degree of attention. Insofar as pharmaceutical goods, regardless of whether they are prescribed, the relevant public’s degree of attention is always relatively high[1]. However, given that the general public is more prone to confusion than the medical profession, and because they were the public common to both parties, the opposition proceeded on the basis of the common public.
For the goods found to be identical or at least similar, it was decided that the general Romanian public was likely to understand the verbal element ‘PROCTO’ in both signs. The EU Intellectual Property Office (“EU IPO”) said that the relevant public would understand ‘PROCTO’ as ‘meaning (relating to) anus, of the region, of the anus’. The Romanian consumer obviously has a more expansive vocabulary than me!
Therefore, for the goods concerned, PROCTO would be understood as referring to the potential use of the goods (e.g., treating haemorrhoids and anal fissure) and the PROCTO element in each mark was therefore weak.
The verbal components ‘LYSYAL’ and ‘LIZIN’ were considered meaningless and therefore distinctive in relation to each mark.
Despite the weak PROCTO element, and LYSYAL and LIZIN having no obvious meaning, the marks were deemed similar, based on the similarity and identity of some of the goods, based on the average consumers imperfect recollection, and on an overall comparison.
Similarity of Goods
The comparison of goods in pharmaceutical classes is known to be stricter than other classes. However, whilst products might sit in different classes, the EU IPO in this case reminds us that goods are not necessarily similar or dissimilar just on the ground that they appear in the same or different classes under the Nice Classicisation.
For assessing the similarity of pharmaceutical goods and cosmetics, in particular, the following considerations apply:
- the nature and purpose of the goods;
- their distribution channels;
- sales outlets;
- the producers;
- methods of use; and
- whether the goods are in competition with each other or complimentary.
In applying the conditions above, the EU IPO found as per the table below.
Conclusion
Clearing a new name for pharmaceuticals is an increasingly difficult task in both Europe, and the UK as trade mark registers become clogged with earlier rights.
What this case shows is that the search and advice for pharmaceuticals requires more than just a high level assessment of similarity in a single class (such as class 5, which is where pharmaceuticals usually sit), but a deeper granular approach and comparison which considers all of the points above, and then some. The advice and search needs to look at consumers, the nature and purpose of the goods, their methods of use, their complementary nature and so on. A consideration of earlier cosmetic rights in class 3 would also be prudent. Whilst some goods in classes 3 and 5 weren’t deemed similar for the purpose of this opposition, many were.
So, if your product and business has the potential to straddle both the pharmaceutical and cosmetic divide, it will be increasingly difficult to differentiate on the basis of class alone. You’ll need to consider the wording of your trade mark and the intended use outside of just the NICE Classification.
For now, we can rest safe in the knowledge that ‘medicinal products for haemorrhoids and anal fissures’, at least for trade mark purposes, is similar to cosmetic products - and we shouldn’t be seeing ProctoLYSYAL moisturiser next to PROCOTOLIZIN haemorrhoid cream on the shelves anytime soon.
Schedule to show similarity of goods:
| Earlier specification for PROCTOLIZIN Opponent’s Goods | Later specification for proctoLYSYAL Applicant’s Goods | EU IPO commentary on similarity and consumer |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 1: Chemical products for industry and science.
| Dissimilar Although raw materials are important in the production of the goods, and in the present case, the contested goods could be used to produce goods in Class5, the Opposition Division does not consider that these goods have enough points of contact to warrant a finding of similarity. They have different natures and purposes, target different consumers, and are found in different channels of distribution. Although one product is used for the manufacture of another, this is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct[2]. The raw materials subjected to a transformation process are essentially different from the finished goods that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose[3]. Furthermore, they are not complementary on the ground that one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer. While the contested goods target the professional public in industry and science, the opponent’s goods target the public at large and medical professionals. Naturally these goods are found in different shops. While the contested goods are bought from specialised shops and warehouses, the opponent’s goods are found in pharmacies/drug stores. Moreover, these goods are not in competition. |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 3: intimate hygiene products; beauty products for skin treatment; cosmetics product; soaps; | Similar to a low degree The purpose of the contested goods is, broadly speaking, to clean the body of dead skin cells, oil, sweat, dirt and other impurities and to protect the appearance or odour of the human body and they are also often fragranced to add a pleasant smell. Likewise, the opponent’s goods are used in relation to conditions that need to be constantly cleaned up and that can affect one’s appearance or body odour. Therefore, these goods may coincide, at least, in purpose and distribution channels, since they can be found in pharmacies or other specialised shops. They target the same public. |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 3: Essential oils | Similar to a low degree Essential oils can be used as remedies against mild health conditions. Some essential oils have disinfecting properties and they are used as disinfectants (e.g., cinnamon oil, clove oil and rosemary oil). To that extent, the contested goods can serve the same purpose as goods included in the category of medical and veterinary preparations and articles. These goods satisfy the needs of the same public and coincide in distribution channels, such as pharmacies and drug stores. |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 3: Perfumes | Dissimilar Perfumes and essential oils have the purpose of imparting a pleasant scent to the body or environment, which is different from the purpose of medicinal products for hemorrhoids and anal fissures for which the earlier mark is protected in Class5. Therefore, their nature, purpose and methods of use are different. Furthermore, they do not coincide in their producer or distribution channels. Finally, these goods are neither complementary nor in competition, and target different end users. |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 3: Toothpastes; hair lotions | Dissimilar The contested toothpastes; hair lotions are toiletry goods that can be found in the same stores as the opponent’s goods, namely pharmacies; however, their purpose as set out above is clearly different to the purpose of the opponent’s goods intended for use for hemorrhoids and anal fissures. The conflicting goods also have a different nature and method of use, and are not produced by the same or economically linked undertakings. They are neither complementary nor in competition or interchangeable. |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 5: pharmaceutical and veterinary products; | Identical The contested pharmaceutical and veterinary products include, as a broader category, the opponent’s medicinal products for human and veterinary use for hemorrhoids and anal fissures. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods. |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 5: disinfectants; sanitary preparations for medical purposes | Similar The contested disinfectants; sanitary preparations for medical purposes serve medical purposes related to hygiene and are used in the healthcare sector, namely hospitals and consulting rooms. The opponent’s goods have the same general purpose, namely to cure diseases specifically related to hemorrhoids and anal fissures. Therefore, these goods are similar as they are usually produced by the same undertakings and are distributed to the same relevant public through the same channels. |
| Class 5: Medicinal products for human and veterinary use for hemorrhoids and anal fissures. | Class 5: baby food; food supplements for humans and animals; dietetic foods and substances adapted for medical or veterinary use | Similar to a low degree The contested baby food; food supplements for humans and animals; dietetic foods and substances adapted for medical or veterinary use are substances prepared for special dietary requirements, which may have the purpose of treating or preventing disease in human beings or animals. Therefore, bearing in mind that the purposes of these goods is similar to the opponent’s goods as they are used to improve a patient’s medical condition, and they generally have the same distribution channels. |
[1] (15/12/2010, T 331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T 288/08, Zydus, EU:T:2012:124, § 36).
[2] (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51).
[3] (03/05/2012, T‑270/10, KARRA / KARA et al., EU:T:2012:212, § 53).
