Dr. Michael Best will be attending the INTA Annual Meeting in San Francisco from May 14 to May 18, 2011.

BEST Rechtsanwälte was chosen as the winner of the Corporate Intl Magazine Global Award for 2010 in the category "Patent & Trademark Law Firm of the Year in Germany".

On 22/05/2009, the OHIM issued a decision in opposition B 1 056 458. In this decision, the comparison of goods is of particular interest.

Nutritional supplements are normally divided into those for medical purposes (class 05) and those for non-medical purposes (classes 29, 30, 31). This is still the case e.g. at the German Patent and Trademark Office.

In 2006, the OHIM decided to abolish this division and to classify all food supplements and nutritional supplements in class 05, irrespective of their nature and purpose (see Alicante News of 20th July 2006).

This means an unnecessary complication e.g. in regard to the classification of International Registrations or when claiming priorities. The addition of food supplements and nutritional supplements in class 05, which is already the subject of a large number of registrations, also means that availability searches for new trademarks become even more complex and voluminous. The two sectors (pharmaceutical and food industries) need to pay a far greater degree of attention to each other’s marks than was the case previously.

Nevertheless, with additional efforts it should still be possible to create legally available trademarks due to the existing differences between the goods. However, this could change if the above referenced opposition decision is an indication of a new practice of the OHIM. In the decision, the Opposition Division compared the goods “pharmaceutical products” and inter alia “nutritional supplements” and wrote:

“As regards the contested nutritional supplements, they are preparations intended to supply nutrients, such as vitamins, minerals, fatty acids or amino acids, that are missing or are not consumed in sufficient quantity in a person's diet. Class 5 contains dietetic substances adapted for medical use. Although the precision of being adapted for pharmaceutical use is only given explicitly for the dietetic substances of the application, being classified in class 5 which is the class mainly for medical substances, these food supplements are also similar to the goods of the earlier right.”

Nutritional supplements (and from the wording food supplements as well) are therefore similar to “pharmaceutical products” even if they are NOT destined for medical purposes simply because they are classified in class 05 and that class is “mainly for medical substances”.

This decision shows that the OHIM has established similarity between goods which do not necessarily show a lot of overlaps in two steps (reclassification and comparison of the goods) – with all the consequences resulting from this finding of similarity.

Interestingly, the classification of food for babies in class 05 does not lead to a finding of similarity to pharmaceutical products in the same decision.

Future decisions of the OHIM should therefore be watched closely to see whether this decision is indicative of a new practice of the Office. Additionally, this subject could be addressed in the appropriate groups and NGOs, where a clear position could be found and communicated through the appropriate channels.

Starting today, Best Rechtsanwälte Blog is going online to bring you news and information about trademark, design and domain law, as well as about developments in our firm and any other matters of interest. We hope you will find it useful and informative and look forward to receiving comments and suggestions.