CJEU – 11 DECEMBER 2014 OHIM / KESSEL MEDINTIN GMBH – PRAMINO / PREMENO
Subject: product restriction must establish the precise coverage of a sub-category of products referred to in the application for registration
Kessel owns the application for registration of the Community trade mark PREMENO filed on 7 November 2007 for the Class 5 products “vaginal ovules”.
On 7 July 2008, Janssen-Cilag filed opposition on the grounds of its earlier German trade mark PRAMINO, registered for Class 5 “prescription medicines”.
The OHIM admitted this opposition but only for those products for which a use had been demonstrated: “prescription medicines, i.e. hormonal contraception medicines”.
Kessel lodged an appeal against this decision and modified the name of its trade mark application as follows: “non-prescription vaginal ovules for vaginal dryness and infections”.
The Board of Appeal of the OHIM held that the products at issue were identical on one hand and, on the other, rejected this request for restriction by arguing that “there is no need to dwell on the explanations given by the trade mark holder as to the medical symptoms and the category of patients which may be concerned by such symptoms”.
Kessel appealed for the annulment of the Board of Appeal’s decision. The General Court of the European Union (EGC) held that the request for restriction should be taken into consideration to the extent that the basic criterion allowing for the identification of the pharmaceutical products (…) and thus of the scope of the trade mark’s protection is represented by their therapeutic indication. And that the specification that they are non-prescription products “makes no less relevant such request as a whole”.
The Court therefore annulled the contested decision.
The OHIM appealed to the CJEU for a reversal of this decision.
The CJEU firstly pointed out that a request to restrict products covered by a Community trade mark application must clearly indicate the nature of the products for which registration is being applied.
Therefore, the restriction must be based on a criterion allowing to establish with sufficient precision the coverage of a sub-category of products referred to in the application for registration as a Community trade mark.
In this case, the CJEU ruled that the EGC was right in holding that the request for restriction was based on the criterion of therapeutic indication which, with respect to pharmaceutical products, constitutes a basic criterion for the definition of a sub-category of such products. It also held that the inclusion of the criterion that the products are non-prescription does not affect the clarity or precision of the application and that, moreover, such criterion should be taken into consideration when assessing the relevant public and the risk of confusion.
The Board of Appeal should therefore have taken Kessel’s request for restriction into consideration.
This decision shows us that a request for the restriction of products covered by a Community trade mark must be based on a criterion allowing to establish with sufficient precision the coverage of a sub-category of products referred to in the application for registration and that if a non-essential criterion is added it does not render the restriction any less precise, especially since such additional criterion may be decisive in assessing the risk of confusion and the relevant public.
Contact : Marion Laperriere
Publication date : February 2015