EU General Court issues mixed ruling in pharma TM clash
The EU General Court today ruled on a pharmaceutical trademark dispute over the names ‘Emcur’ and ‘Emcure’, finding similarity for some goods and services but not others.
The case dates back to October 2013, when India-based drugs company Emcure Pharmaceuticals applied for ‘Emcure’ as an EU trademark (EUTM) in classes 35, 41, 42, 44 and 45 of the Nice Agreement.
Goods and services covered include “distribution of samples” (class 35), “providing of training and education in pharmaceutical and medical fields” (41), “chemical research” (42), “medical services” (44), and “campaigning to spread social awareness” (45).
In May 2014, Emcur, a German provider of cold and allergy products, opposed the mark at the European Union Intellectual Property Office (EUIPO) based on an earlier EUTM and a German work mark for ‘Emcur’.
The EUTM was registered in class 5 (specifically for “salt and products containing salt(s) for medical use”) and class 10 (“nasal douches”). The German mark only covered class 5, which includes in this case “pharmaceutical products, except pharmacy-only preparations against cardiovascular diseases”.
Emcur said there would be a likelihood of confusion with its marks.
In March 2016, the EUIPO’s Opposition Division upheld the opposition in part by rejecting the applied-for mark in relation to “pharmacy advice” in class 44. It said there would be a likelihood of confusion with the German mark (which covered the same goods as the EUTM).
However, the applied-for mark was allowed to proceed for all other services because these would not cause confusion, according to the EUIPO.
A month later, in April 2016, the German company appealed against the adverse aspect of decision to the EUIPO, but the Second Board of Appeal dismissed the appeal in December 2016. The board gave six reasons for its decision, including that while the signs are visually and phonetically highly similar, the goods and services are not.
On appeal to the General Court, the German company argued that the low degree of similarity between the earlier marks’ goods and the services in four of the five classes for ‘Emcure’ (35, 41, 42 and 44) is offset by the signs’ high degree of similarity.
The court first examined potential similarity surrounding classes 35 (including “distribution of samples”) and 41 (including “providing of training and education in pharmaceutical and medical fields”), and backed the board’s finding in this respect.
However, the court said the board incorrectly found that there was no similarity between the class 5 goods in the earlier German mark and the applied-for services in class 42 (including “chemical research”). It said the services in class 42 are closely connected to pharmaceutical products, which are covered by class 5.
The General Court reached the same conclusion for class 44 (including “medical services”), finding that the board erred “in so far as the pharmaceutical products covered by the earlier marks and the services in class 44 covered by the mark applied for are aimed at the same public, pursue the same aim, can share the same distribution channels and are complementary”.
As a result, the court annulled the board’s findings in relation to classes 42 and 44 but dismissed the remainder of the appeal.
This is not the first IP case involving Emcure that LSIPR has reported on this year. In February, the company was sued by Japan-based Sumitomo Dainippon Pharma for allegedly infringing a patent covering anti-psychotic drug Latuda (lurasidone hydrochloride).
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