FRIDAY, 30 SEPTEMBER 2011
OHIM Boards of Appeal: pharmaceutical products and cosmetics
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.
The 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.
GLAXO had requested the opponent to submit proof of use of the earlier mark.
LABORATORIOS INIBSA 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.
The 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 diagnosis’.
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.
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