Trade mark practitioners should take note of the recent judgment by the General Court in the case of Laborotorios Ern, SA v EUIPO which provides a useful reminder of the assessment undertaken by the Court when considering the likelihood of confusion between two signs. In this decision the General Court upheld the Board of Appeal’s finding that there was no likelihood of confusion between RYM and NRIM Life Sciences. The General Court upheld the Board of Appeal’s rejection of the opposition.
An application was filed for the registration of an EUTM for the word mark NRIM Life Sciences in Class 5 (Medicinal and veterinary preparations and articles) in June 2014. Later that year, Laborotorios Ern gave notice of opposition, based on an earlier Spanish national trade mark for the word mark RYM, also in Class 5 (Pharmaceutical and sanitary preparations). The opposition relied on the ground of likelihood of confusion (Article 8(1)(b) of the EUTM Regulation) but was rejected entirely by the Opposition Division in September 2015, and its appeal dismissed by the Fifth Board of Appeal of the EUIPO (the BoA) in September 2016.
The findings of the BoA included the fact that the relevant public was Spanish and consisted of the general public and health professionals, who had a high level of attention. The goods covered by the mark applied for and those covered by the earlier mark were identical or similar. In addition, the BoA found that the signs had a low degree of visual and phonetic similarity, with conceptual neutrality. In light of these findings, it was held that there was no likelihood of confusion of the relevant public.
General Court decision
The basis of Laborotorios’ appeal to the General Court was that the BoA had erred in its assessment of the distinctive and dominant features of the signs at issue, as well as of the similarity of the signs and the likelihood of confusion. The General Court disagreed.
Comparison of the signs at issue
Trade mark practitioners will be aware that the global appreciation of the visual, aural or conceptual similarity of the signs in question must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components. The General Court agreed with the analysis of the BoA; the signs at issue (RYM and NRIM Life Sciences) were found to be only vaguely similar. Although it was determined that the “Life Sciences” component of the latter sign was weakly distinctive, due to its descriptive nature, case law dictates that any such descriptive element of a sign is not necessarily negligible in the overall impression produced by it, and should therefore be considered.
Visually, a comparison of “r”, “y”, “m” was carried out as against “nrim”, “life” and “sciences” and was, unsurprisingly, found to be only weakly similar. A phonetic comparison rendered the same conclusion. Conceptually, it was found that as neither RYM nor NRIM Life Sciences have any meaning in Spanish, the signs at issue must be conceptually neutral. Overall, the signs were found to be only weakly similar.
The likelihood of confusion
A likelihood of confusion is the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. As such, there can be no such likelihood where the public does not think that the goods come from the same undertaking (or from economically-linked undertakings). The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the case, in particular the degree of similarity between the signs and that of the goods / services covered.
The General Court agreed with the finding of the BoA that in the present case there is no likelihood of confusion; the degree of attention of the relevant public is high, which when coupled with a very low degree of similarity between the signs at issue, offsets any similarity of the goods in question. The General Court dismissed the appeal.
The decision was handed down on 28 November 2017.