In case T-289/09, the GC upheld the findings of the BoA: there is likelihood of confusion between OMNICARE CLINICAL RESEARCH and earlier figurative German trademark 'OMNICARE' for Class 42 services.
The figurative element in the earlier mark contains, namely the stylised letter ‘o’, is not visually striking and does not substantially alter the perception of the word ‘omnicare’. The CTM applied for contained two additional words, namely ‘clinical’ and ‘research’, which are descriptive of the nature of the services at issue and, consequently, devoid of distinctive character. On a conceptual level, as being identical and as meaning ‘total care’ by the relevant public, which is made up of experts in the medical and pharmaceutical professions in Germany.
The Court rejected the Applicant’s plea regarding the ‘lack of genuine use of the earlier mark because the services were provided free of charge’. It held that the ultimate goal of such services is to encourage the relevant public to purchase or prescribe medicinal products produced by the opponent, so they are none the less in competition with other similar services on the market, in particular when they are supplied by undertakings present on the medicinal products market, which may also provide those services free of charge. Consequently, by using its mark in such a way, the applicant seeks to create or maintain an outlet for those services in the European Union, on a market on which other undertakings are present.
It is clearly artificial, however, to claim to be able to conduct, in a general manner, ‘clinical and laboratory research in the field of pharmaceuticals’ and exclude urologists from the potential recipients of those services. Consequently, the Board of Appeal was right to conclude that the services at issue were similar, in spite of the limitation by the applicant.
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