“Linex” and “Lines Perla”: a matter of class

In the recent case T-444/12 of 10.16.2014 the Court of Justice has stated about a very important issue relating to trademarks, that is the similarity between goods and services.

As we know, a trademark is protected only for the goods and services listed in the application and for the products similar to them. In the present case the Court had to determine whether the goods claimed by the trademark “LINEX” in relation to the class 5, and specifically “Pharmaceutical preparations, containing lactobacillus acidophilus” were or were not similar to the goods claimed by the trademark “LINES PERLA”, recorded, between other, in class 5 for “Ladies hygienic diaper; hygienic napkins for incontinents”.

In previous decisions the Office had accepted the reasons of the holder of Italian trademark “LINES PERLA” by considering the products similar, and thus rejecting the registration of the Community trade mark “LINEX”; but the Court was not of the same opinion.

In previous proceedings, both the Opposition Division that the Board of Appeal had stated that there was a high degree of similarity between the goods on the basis of factors well established in Community case-law (above all, see the key decision C-39/97, ECJ, Canon v. Metro-Goldwyn-Mayer), such as the nature of the goods, their method of use, their intended purpose. In particular, it was stated that the goods in question belong to the common category of ones aimed at the healthcare and used for the same therapeutic purposes.

In the present judgment, the Court instead uses a “concrete” evaluation criterion, aimed at enhancing the specific nature of the types of designated products, and states that it sees no affinity on the nature of the contested goods. While the products belong to macro-categories recognized even earlier as having “a high degree of similarity” – in particular, “pharmaceutical goods” and “sanitary goods” –, a deeper examination of them reveals how these can not be considered in no way similar. This observation is also supported by the comparison between the methods of use of those products: the “pharmaceutical preparations, containing lactobacillus acidophilus”, which provide a way of oral intake or a local application, evidently are not comparable in terms of use to “ladies hygienic diaper; hygienic napkins for incontinents”.

Moreover, the Board of Appeal had maintained full complementarity between the goods as commonly designed to treat problems related to incontinence; statements completely denied by the Court. None of the evidence adduced by the opponent – excerpts from the website of the University of Maryland and Wikipedia, as well as a press article about “Linex Forte” drug – was appropriate for the Court to show that the lactobacillus acidophilus is indicated for the above therapies or that products such as sanitary napkins and diapers are adapted to allow the administration of this bacterium. Furthermore, there is no functional link between the goods covered by the respective trade marks in the class 5, with food supplements on the one hand and hygienic diapers and napkins on the other.

In light of the interesting work of interpretive revision, the Court therefore annulled the Commission’s decision and upheld the appeal, considering admissible the trademark “LINEX”.