Ascendo Medienagentur AG (the “Applicant”) applied for the mark above left in the EU in classes 3, 5, 30 and 32 (the “Application”). This Application was opposed by Laboratorios Ern, SA (the “Opponent”) based on their earlier Spanish trade mark registration for DYNAMIN (“the Earlier Registration”). The application covered in class 5 “dietary supplements and dietetic preparations; hygienic preparations and articles; medical and veterinary preparations and articles”. The Earlier Registration covered in class 5 “Dietetic foods adapted for medical use in any shape or form”.
Decision of the Opposition Division
The opposition was based only on Article 8(1)(b) – a likelihood of confusion.
The opposition was partially upheld in relation to “dietary supplements and dietetic preparations; medical and veterinary preparations and articles” which were held to be confusingly similar to the goods covered by the Earlier Registration.
Both parties appealed.
Decision of the Board of Appeal
The Board of Appeal upheld the opposition only in relation to “dietetic preparations”.
It was held that the relevant public were Spanish people given the Earlier Registration was a Spanish national trade mark. They were deemed to have a high level of attention for the medical goods and average attention for the remaining goods. The Board of Appeal held that the marks had only a low degree of visual similarity, an average degree of phonetic similarity and as neither mark had any meaning in Spain, no conceptual similarity. However, despite having a low-average level of similarity, it was still held that the marks were confusingly for the identical goods i.e. dietary preparations.
Decision of the General Court
The Opponent appealed again to the General Court.
Much of the decision centres on the similarity of the goods. The court has to take into account all the relevant factors including the nature of the goods, their intended purpose and their method of use and whether they are in competition with each other or are complementary, as well as considering distribution channels of the goods concerned.
Dietetic foods adapted for medical use in any shape or form vs dietary supplements
The Opponent argued they were in fact highly similar as they were for the same public, can coincide in purpose, distribution channels and method of use but this was dismissed. These goods were held to have an average similarity. It was held that dietary supplements supplemented everyday food whereas dietetic foods were for medical use and could be used to replace everyday food.
Dietetic foods adapted for medical use in any shape or form vs hygienic preparations and articles
The Opponent argued that the goods were closely similar as they have the same purpose, which is to improve the health and medical condition of patients and are usually distributed through the same outlets. However, these were held to be different given that the goods in the Earlier Registration were for medical use and that they were a food, unlike hygienic preparations and articles. It was also held that their method of use was different since the hygienic preparations and articles were not ingested but rather are applied to the body. The General Court held the fact that the two items may be sold in pharmacies was not sufficient to establish a similarity between them nor the fact that both products would have an impact on health.
Dietetic foods adapted for medical use in any shape or form vs medical and veterinary preparations and articles.
The Board of Appeal had held that these goods were not similar. However, the Opponent argued before the General Court that these goods were highly similar, although different in nature, as they can be produced by the same undertaking or related undertakings and are directed at the same public. It was held that as these arguments had not been substantiated that the Board of Appeal had been correct in their initial assessment.
The General Court upheld the Board of Appeal assessment of the marks and concluded that visually the marks have only a low level of similarity and an average level of phonetic similarity. The Court did consider the conceptual similarity, which had been dismissed by the Board of Appeal, but held that even though Spanish people may think there is a link between dynamin and dinamico (Spanish for dynamic) or even that the words are similar to vitamin, the conceptual similarity is still low.
In conclusion, the General Court held that the Application could proceed for all the goods except dietetic preparations.
Case Ref: T-700/16