Class 46 has received a note from Udo Pfleghar (Freitag & Best, Frankfurt, Germany) on the decision of OHIM's Opposition Division of 22 May 2009 in opposition B 1 056 458 Laboratorios Andrómaco, S.A. v OTC Pharma International B.V (NULCEX/NUFLEX). The note explains why this decision is important:

"Nutritional supplements are normally divided into those for medical purposes (class 5) and those for non-medical purposes (classes 29, 30, 31). This is still the case e.g. in the German Patent and Trade Mark Office.

In 2006 OHIM decided to abolish this division and to classify all food supplements and nutritional supplements in class 5, irrespective of their nature and purpose (Alicante News, 20 July 2006). This means an unnecessary complication e.g. in regard to the classification of International Registrations or when claiming priorities. The addition of food supplements and nutritional supplements in class 5, which is already the subject of a large number of registrations, also means that availability searches for new trade marks become even more complex and voluminous. The two sectors (pharmaceutical and food industries) need to pay a far greater degree of attention to each other’s marks than was the case previously.

Nevertheless, with additional efforts it should still be possible to create legally available trade marks due to the existing differences between the goods. However, this could change if the above referenced opposition decision is an indication of a new practice of the OHIM. In the decision, the Opposition Division compared the goods “pharmaceutical products” and inter alia “nutritional supplements” and wrote:

“As regards the contested nutritional supplements, they are preparations intended to supply nutrients, such as vitamins, minerals, fatty acids or amino acids, that are missing or are not consumed in sufficient quantity in a person's diet. Class 5 contains dietetic substances adapted for medical use. Although the precision of being adapted for pharmaceutical use is only given explicitly for the dietetic substances of the application, being classified in class 5 which is the class mainly for medical substances, these food supplements are also similar to the goods of the earlier right.”

Nutritional supplements (and from the wording food supplements as well) are therefore similar to “pharmaceutical products” even if they are NOT destined for medical purposes simply because they are classified in class 5 and that class is “mainly for medical substances”.

This decision shows that the OHIM has established similarity between goods which do not necessarily show a lot of overlaps in two steps (reclassification and comparison of the goods) – with all the consequences resulting from this finding of similarity.

Interestingly, the classification of food for babies in class 5 does not lead to a finding of similarity to pharmaceutical products in the same decision.

Future decisions of the OHIM should therefore be watched closely to see whether this decision is indicative of a new practice of the Office. Additionally, this subject could be addressed in the appropriate groups and NGOs, where a clear position could be found and communicated through the appropriate channels".