There have been a number of recent decisions concerning Community trade marks in the Pharmaceutical sector in Europe recently, which could impact on the protection pharmaceuticals companies have when registering or defending Community trade marks. In this post we outline our Top 5 decisions.
1. Court of Justice of the European Union, judgment of 5 February 2015 [CERCON = ZIECON (fig.)]
The judgment concerns the likelihood of confusion between the earlier Community trade mark Cercon and the Community trade mark application ZIECON (fig.), covering material for stopping teeth and other goods and services for dentists.
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The General Court (GC) held the signs to be confusingly similar; thereby stressing that the figurative element of the mark applied for is trivial and therefore negligible for the comparison of the signs. Moreover, given that both signs allude to the substance Zirkon used in the goods applied for, there is also a conceptual similarity. The applicant filed an appeal against this judgment arguing that the GC’s overall assessment of the likelihood of confusion was vitiated by error, as the GC did not give sufficient weight to the figurative element of the mark applied for. However, the Court of Justice of the European Union did not follow this view and upheld the contested decision.
2. General Court, judgment of 27 February 2015 in Case T-227/13 [INTERFOG = INTERFACE]
The judgment concerns the likelihood of confusion between the Community trade mark application “INTERFACE” and the earlier mark “Interfog”. The marks under comparison covered identical class 5 goods. The GC highlighted that the marks identically start with the element “Inter” and that there are some similarities between the respective endings “fog” and “face”. Overall, the court held that there is a relevant phonetic and visual similarity between the sign. Having regard to the identical element “Inter-“, the GC did not dispute the applicant’s argument that it is a relatively common prefix and that its distinctiveness is therefore low. Nevertheless, this observation does not call into question that the marks at issue have similarities which render them similar overall. Moreover, the court did not follow the applicant’s argument that any visual and phonetic similarities are neutralised by the conceptual difference between the marks. Having regard to the goods at issue, the term “interface” would “not have associations liable to facilitate the recollection of the mark on the basis of that meaning”. As a consequence, the conceptual difference will pass unnoticed and cannot help to keep the marks safely apart.
Whilst the outcome of the decision may be somewhat surprising from an English speaker’s perspective, it must be taken into account that as far as Community trade mark matters are concerned, the likelihood of confusion often has to be assessed based on other languages too. In that regard, reference is made to the GC’s judgment of 16 July 2014 in Case T-324/13, where the GC held the signs FEMIBION and FEMIVIA to be confusingly similar, thereby stressing that the Spanish public would pronounce the different consonants “B” and “V” in a similar way.
3. General Court, judgment of 3 March 2015 [ZEBINIX = ZEBEXIR]
The GC had to decide upon the likelihood of confusion between the Community trade mark application Zebexir and the earlier right Zebinix. The marks under comparison both covered, amongst others, identical goods in classes 3 and 5. Whilst the Office for Harmonization in the Internal Market held that the younger sign keeps sufficiently away from the earlier mark, the GC initially found the signs to be too close (GC, judgment of 9 October 2012 in Case T-366/11). Subsequently, the Court of Justice for the European Union invalidated that judgment for formal reasons and referred it back to the GC for further consideration (CJEU, judgment of 17 October 2013 in Case C-597/12 P). The GC confirmed its prior judgment and held the signs to be confusingly similar. Having regard to the three identical letters “ZEB-” of the marks at issue, the differences in the centre and at the end of the signs are not sufficient to keep the signs safely apart. Hence the decision further takes into account that the signs also coincide in the letters “I” and “X”, which are easy to remember.
4. General Court, judgment of 4 March 2015 in Case T-543/13 [AYUR (fig.) ? PRANAYUR]
The GC had to decide upon the likelihood of confusion between the Community trade mark application PRANAYUR and, inter alia, the earlier figurative mark AYUR as shown below:
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The court held that the relevant public consists of both professionals in the field of beauty and health care products as well as end consumers. Given that none of the products at issue (inter alia herbal preparations in class 5) were pharmaceutical products used only on medical prescription, the degree of attention of the relevant public was held to be average. Notwithstanding that the goods under comparison were identical or similar, the GC held that there is no likelihood of confusion, given that the signs were different overall and, therefore, a condition for the finding of likelihood of confusion was not met. The mere coincidence in the verbal element “AYUR” was not held to render the signs similar overall as the further element “PRAN-” at the beginning of the earlier mark served to keep the signs safely apart both visually and phonetically.
5. General Court, judgment of 26 March 2015 in Case T-551/13 [VAMED = AKTIVAMED (fig.)]
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The marks at issue covered similar goods and services in, amongst others, classes 5, 10 and 44. Having regard to the medical nature of the products at issue, there was dispute between the parties if and, as the case may be, to what extent the common ending “-MED” could contribute to the finding of likelihood of confusion. Whilst the owner of the contested application held that the relevant public will easily understand that the suffix alludes to “medicine” and that it could thus not be given too much weight, the GC held that even if the public should understand this allusion, this would not automatically mean that this element must be given less weight when comparing the signs. Overall, whilst the signs were held to be similar to a low degree only, the GC upheld the contested decision and confirmed that there is likelihood of confusion between both marks.
It is noteworthy that the GC held the fact that VAMED is completely included in AKTIVAMED is sufficient to render the signs confusingly similar (even though “MED” is an obvious allusion to “medicine), whilst the marks AYUR and PRANAYUR were held to be sufficiently different to deny likelihood of confusion (even though “AYUR” is a distinctive element).
This article is based on case comments which were first published in German here.