May 30, 2019
Headache for Bayer AG
Headache for Bayer AG

In this case, Bayer AG opposed an application by Uni-Pharma for a mark consisting of the word ‘SALOSPIR’ and figurative elements consisting of ‘green, shades of green, white, and black’ for ‘pharmaceuticals’ in class 5.

The Opposition was based on Bayer’s:

  1. two earlier German marks for the word ‘ASPIRIN’;
  2. six earlier EU figurative marks containing figurative elements only;
  3. non-registered sign (for the packaging of their Aspirin product);

The grounds relied on in support of Bayer’s opposition were:

  1. Article 8(1)(b) – (Likelihood of confusion)
  2. Article 8(4) – (Non registered rights)
  3. Article 8(5) – (Reputation)

The Opposition was rejected by the Opposition Division. Bayer appealed the decision at the EUIPO Board of Appeal (BoA), and this appeal was also rejected. The BoA held that the mark applied for was different from the earlier German marks and from the earlier EU figurative marks.

With regards to Article 8(1)(b), Bayer argued that the Court had incorrectly assessed the similarity of the marks, as well as the dominant and distinctive elements of the opposing marks. Bayer stressed that the signs at issue are similar ‘at least … to a certain degree’. Bayer maintained that the figurative elements in the mark applied for - particularly the combination and configuration of the colours green and white - had an independent distinctive character (even when assuming that the word element ‘SALOSPIR’ was dominant).

Ultimately, this argument was rejected. The BoA found that the word element ‘SALOSPIR’ dominated the overall impression conveyed by the mark applied for, and was obviously not present in the earlier marks. The Court observed that, as a rule, a purchaser for pharmaceutical goods issued without prescription will generally say the name of the product(s) they wish to purchase when making the purchase. Therefore, the word element of the mark must be held to be dominant. The BoA also found that that the green and white colour combination was commonplace in the pharmaceutical sector, thus refuting Bayer’s arguments that these elements had an independent distinctive character within their marks.

Bayer relied on its Aspirin packaging with regards to Article 8(4), which grants trade mark protection to a sign used in the course of trade where such use has led to recognition of the sign in question by the relevant public “as a trade mark”. The BoA found that none of the documents submitted by Bayer in the original proceedings made reference to the non-registered sign they were now relying on. The recognition “as a trade mark” had to concern the actual sign invoked and not its individual elements which, as such, were never used in trade.

With regards to Article 8(5), as the signs at issue were found not to be identical or similar, Bayer’s claim that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of their earlier marks, was rejected.

In summary, a disappointing outcome for Bayer AG here. The case highlights the ever-present issues brand owners face with respect to lookalike products, and what steps need to be taken to prevent third parties from creeping closer to the ‘look’ and ‘feel’ of a product and its appearance. Stobbs are proud to offer expert advice and tailor specific filing strategies to bolster your existing protection to help guard against potential lookalike products. Please feel free to get in touch!

Trademarks /  Disputes /  Pharma

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