January 4, 2010- OHIM
On January 4, 2010, the Opposition Division of the OHIM rejected the opposition involving the marks DROSETUX and DROSETIL to the extent that “chemicals used in the pharmaceutical and medical industry” (class 1) were regarded as dissimilar with “pharmaceutical, veterinary and dietetic preparations adapted for medical use” (class 5).
For the OHIM, said chemicals are normally bought by pharmaceutical companies in high quantities on the wholesale level to form part of pharmaceuticals packaged and sold as units over the counter in pharmacies or drugstores.
The commercial channels were also pointed out as being different, the products at hands being not marketed alongside each other: chemicals of class 1 are manufactured in chemical production plants and processed in chemical laboratories or pharmaceutical companies where the finished products are made; pharmaceuticals of class 5 move from the pharmaceutical companies to pharmacies, hospitals, clinics and other healthcare institutions.
The OHIM consequently took the view that consumers of pharmaceutical products have no interest in large-scale purchasing of the applicant’s chemicals and are not concerned with the origin of the ingredients contained within the pharmaceuticals. Equally, the customers of the chemicals undertakings have no interest in buying final pharmaceutical products. Additionally, whereas products are admittedly used for the manufacturing of pharmaceuticals, this connection is very tenuous.
These differences in nature, purpose, method of use, distribution channels, targeted consumers were considered as significant by the Office what contradicts with the most current European case-law. This (dis)similarity situation will have to be further monitored to know whether this remains an isolated case or whether the usual tendency is now changing.
