In 2006, GLAXO GROUP LIMITED applied for the registration of the
Community Trademark CLENOST for pharmaceuticals
preparation and substances and vaccines.
The application had been opposed by LABORATORIOS INIBSA S.A. on the
basis of their earlier registration for CLENOSAN also for goods in class 5: Pharmaceutical and veterinary preparations and
disinfectants; dietetic food for babies and sick people, for medical use.
opponent had based his opposition on all the goods covered by his earlier mark
and had directed it against all the goods applied for by GLAXO.
had requested the opponent to submit proof of use of the earlier mark.
S.A. had shown that it had used his earlier mark for almond milk gel, deodorant spray,
hand-cream, body hydrating milk, lip regenerator, preparation for the daily
cleaning of psoriasis-prone skin, roll-on deodorant, shower gel for
hypersensitive and atopic skin.
Among others, ten
print-outs from the opponent’s web page referring to different products
labelled as ‘CLENOSAN’, such as ‘Pharmaceuticals/OTC Products’, have been submitted.
Office had refused the opposition because the opponent had shown consistent use of the earlier
mark as it was registered, for goods falling in the category of pharmaceutical
products, and the two signs had been found to be confusingly similar.
GLAXO appealed the decision, claiming that the
earlier mark was not in use for pharmaceutical preparations, for which it was
registered, but for cosmetic products, goods falling outside the scope of
protection of the trademark.
GLAXO, arguing that the fact that a
product is sold in pharmacies is not sufficient to determine whether it is a
pharmaceutical product, referred to the European Directive concerning
medicines and to the European Directive concerning cosmetics (Directive 2001/83/EC
of the European Parliament and of the Council on the Community code relating to
medicinal products for human use and Council Directive 76/768/EEC on the
approximation of the laws of the Member States relating to cosmetic products).
The appeal (Case R 877/2010-2) has been found
admissible and the opposition has been rejected.
The Board stressed that even if the European
Directives aim to protect public health, whilst the Nice Classification has a
mere administrative purpose for the registration of trademarks, the
definitions given in the Directives are of interest, because they define the
products which are on the European market.
Under the European Directive relating to
medicinal products for human use, a ‘Medicinal product’ is ‘(a) Any substance
or combination of substances presented as having properties for treating or
preventing disease in human beings; or (b) Any substance or combination of
substances which may be used in or administered to human beings either with a
view to restoring, correcting or modifying physiological functions by exerting
a pharmacological, immunological or metabolic action, or to making a medical
Under the Cosmetics Directive a ‘cosmetic product
shall mean any substance or mixture intended to be placed in contact with the
various external parts of the human body (epidermis, hair system, nails, lips
and external genital organs) or with the teeth and the mucous membranes of the
oral cavity with a view exclusively or mainly to cleaning them, perfuming them,
changing their appearance and/or correcting body odours and/or protecting them
or keeping them in good condition’.
The Board judged
that, according to the evidence submitted by LABORATORIOS INIBSA S.A., the products sold under the mark
‘CLENOSAN’ fall within the category of cosmetics.
The fact that the products are claimed to contain
active substances, does not mean that they are pharmaceuticals.
Moreover, the package leaflet of the bath gel for
atopic skins did not contain the contraindications, the warnings about
possible side effects and the precautions that must be indicated on pharmaceuticals.
Apparently there was no marketing authorization.
Lastly, the fact that the products are sold
exclusively in pharmacies, according to their packaging, does not necessarily
prove that the are pharmaceutical products.
The Board concluded that the use of the earlier
mark had not been proven for pharmaceutical preparations (for use in
dermatology) or for any other goods covered by the earlier registration.