In Alcon Inc v Of Workplace for Harmonisation in the Internal Industry (OHIM) , a mark was refused registration mainly because the public was probably to confuse the mark with a further comparable mark.
In 1998, Alcon filed an application for registration of the word mark TRAVATAN in respect of goods inside Class five, in specific ophthalmic pharmaceutical preparations.
In 1999, Biofarma SA filed an opposition against registration of TRAVATAN, arguing that there would be confusion with the word mark TRIVASTAN, registered in Italy in 1986. This earlier trade mark was also registered below Class five covering pharmaceutical, veterinary, hygiene solutions and other folks.
In compliance with Post 42 of Regulation No 40/94, Alcon requested that Biofarma furnish proof that the TRIVASTAN mark been place to genuine use in Italy. Biofarma sent the requested documents to OHIM, demonstrating genuine use of TRIVASTAN in Italy.
In September 2001, the Opposition Division of OHIM discovered that use of TRIVASTAN was confirmed in respect of a pharmaceutical item inside Class five. The Opposition Division for that reason refused registration of TRAVATAN on the grounds that there was probably to be confusion mainly because of the visual and phonetic similarities in between the marks. Alcon appealed this choice to the Third Board of Appeal who also rejected the appeal on the very same grounds as the Opposition Division. Alcon then applied to the Court of Very first Instance to annul the choice.
Alcon claimed that:-
▪ Post 42(two) and (three) had been infringed mainly because Biofarma failed to submit proof of actual use rather than possible use of TRIVASTAN in respect of ophthalmic solutions and
▪ there has been an infringement of Post eight(1)(b) mainly because the goods at situation had been not sufficiently comparable.
The Court of Very first Instance ruled that:-
▪ the proof submitted by Biofarma demonstrated genuine use of TRIVASTAN was in respect of a medicinal item to treat vascular issues of the eye, and it would be superfluous to call for proof that the item was truly utilised by sufferers for this goal
▪ a likelihood of confusion benefits if the public may think that the goods or solutions in query come from the very same business
▪ a likelihood of confusion is assessed primarily based upon the perception of the public of the marks and goods and solutions in query and
▪ the indicators in query had been visually and phonetically comparable and there was a higher degree of similarity in between the solutions which would outcome in a likelihood of confusion.