In Alcon Inc v Of Office for Harmonisation in the Internal Market (OHIM) [2005], a mark was refused registration because the public was likely to confuse the mark with another similar mark.

In 1998, Alcon filed an application for registration of the word mark TRAVATAN in respect of goods within Class 5, in particular ophthalmic pharmaceutical preparations.

In 1999, Biofarma SA filed an opposition against registration of TRAVATAN, arguing that there would be confusion with the word mark TRIVASTAN, registered in Italy in 1986. This earlier trade mark was also registered under Class 5 covering pharmaceutical, veterinary, hygiene products and others.

In compliance with Article 42 of Regulation No 40/94, Alcon requested that Biofarma furnish proof that the TRIVASTAN mark been put to genuine use in Italy. Biofarma sent the requested documents to OHIM, demonstrating genuine use of TRIVASTAN in Italy.

In September 2001, the Opposition Division of OHIM found that use of TRIVASTAN was proven in respect of a pharmaceutical product within Class 5. The Opposition Division therefore refused registration of TRAVATAN on the grounds that there was likely to be confusion because of the visual and phonetic similarities between the marks. Alcon appealed this decision to the Third Board of Appeal who also rejected the appeal on the same grounds as the Opposition Division. Alcon then applied to the Court of First Instance to annul the decision.

Alcon claimed that:-

▪ Article 42(2) and (3) had been infringed because Biofarma failed to submit evidence of actual use rather than potential use of TRIVASTAN in respect of ophthalmic products; and

▪ there has been an infringement of Article 8(1)(b) because the goods at issue were not sufficiently similar.

The Court of First Instance ruled that:-

▪ the evidence submitted by Biofarma demonstrated genuine use of TRIVASTAN was in respect of a medicinal product to treat vascular disorders of the eye, and it would be superfluous to require proof that the product was actually used by patients for this purpose;

▪ a likelihood of confusion results if the public might believe that the goods or services in question come from the same company;

▪ a likelihood of confusion is assessed based upon the perception of the public of the marks and goods and services in question; and

▪ the signs in question were visually and phonetically similar and there was a high degree of similarity between the products which would result in a likelihood of confusion.

The application was therefore dismissed.

Comment: Ensure that a sought trade mark will not be confused with another mark in regards to the type of product or actual mark.

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