In Case T-218/12, the General Court dismissed the appeal against the following opposition

The Opponent demonstrated genuine use of that trade mark — admittedly in a slightly different form, but with the same distinctive character — in respect of ‘pharmaceutical and dietetic products (for children and patients)’ in Class 5. (see left) The inclusion of the word ‘portugal’ in the earlier trade marks was simply a response to a legal requirement under the Portuguese law in force at the time when the application for registration of those trade marks was filed and, accordingly, that word was not to be taken into consideration ( Código da Propriedade Industrial de 1940 — Decreto-Lei No 30679, de 24 de Agosto de 1940’ (Portuguese Industrial Property Code of 1940 — Decree-Law No 30679 of 24 August 1940).

The purpose of that word element was to indicate that the opponent was domiciled in Portugal and consequently it was a descriptive term, the sole distinctive element of the earlier Portuguese trade mark being the word ‘delta’. Regarding the other figurative and word elements in that mark, although they were independent elements, they remained secondary to the word ‘delta’ owing to their stylisation, size and informative meaning.

Next, the Board of Appeal found that the use of the earlier Portuguese trade mark covered such a wide range of ‘pharmaceutical’ products in various fields of therapy that it was impossible to describe that range as being limited exclusively to certain sub-categories of pharmaceutical product. Nor, according to the BoA, did the form in which the goods were administered call for the establishment of sub-categories. Accordingly, taking into consideration the amount of evidence and the characteristics of that evidence, it found that genuine use of that mark had been established in respect of pharmaceutical products.

Given the goods in question, the level of attention of a public composed of both professionals and end consumers would be higher than usual, owing to the fact that the goods involved have an impact on consumers’ health.

Since it had been established that the earlier Portuguese trade mark had genuinely been used in respect of ‘pharmaceutical products’, that term encompassed the goods in Class 10. In addition, some of the products in respect of which genuine use had been established were specifically recommended in the treatment of cardiac or vascular diseases, that is, in areas connected with the field of endovascular surgery, for which the goods referred to in the trade mark application are used.Thus the goods are— at least to a certain extent — similar, given that they coincided with regard to their relevant public, distribution channels and commercial origin, and that they were complementary in terms of their use.

Regarding the comparison of the signs in question, the Board of Appeal stated that it was aware of the fact that the obligation which existed on 14 March 1945 (the date of filing of the earlier Portuguese trade mark) to include the word element ‘portugal’ in marks filed by trade mark applicants having their seat in Portugal had subsequently been abolished. It also stressed that it was aware of the fact that that additional element was later deleted from all the marks concerned by the Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property), formerly the Repartição da Propriedade Industrial, Direcção Geral do Comércio, Ministério da Economia, Portugal (Portuguese Industrial Property Agency, Directorate-General for Trade, Ministry of the Economy). Accordingly, the opponent’s trade mark right related only to the word ‘delta’, the element which made the marks at issue identical.

Taking into account the identity of the marks at issue and the fact that the goods in question were — at least to a certain extent — similar, the BoA did not err in concluding that the possibility of a likelihood of confusion between the marks at issue could not be excluded, notwithstanding the high level of attention of the particularly specialised relevant public concerned.