Stada Arzneimittel AG (the “Applicant”) applied for the EU trade mark IMMUNOSTAD in classes 3 and 5, which was granted registration (the “Registration”). The Registration was subsequently the subject of a declaration of invalidity by Urgo recherché innovation et developpement (formerly Societe de Developpement et de Recherche Industrielle and Vivatech) based on their earlier French registration for IMMUNOSTIM in class 5 (the “Earlier Right”). The goods that Urgo sought to invalidate were “pharmaceutical preparations; dietetic substances adopted for medical use” in class 5. The Registration covered various pharmaceuticals and dietetic products.
Decision of the EUIPO Cancellation Division
The Cancellation Division held that the marks had overall similarity and the goods covered by the marks were either identical or similar. Therefore, there was a likelihood of confusion on the part of the relevant public.
The Registration was declared invalid. The Applicant appealed this decision.
Decision of the EUIPO Board of Appeal
The Board of Appeal held that the relevant public, in this case specialised people within the field of healthcare in France, would have a higher than average level of attention. It also held that the Earlier Right had an average level of distinctiveness. The Board of Appeal found that the goods were similar and agreed that the marks were overall similar, which would cause a likelihood of confusion.
The Appeal was dismissed. The Applicant again appealed this decision.
Decision of the First Chamber of the General Court
The Applicant argued that 1) the assessment of similarity and the finding of likelihood of confusion was in error and 2) the relevant public would know that “STIM” was an abbreviation of the French word “stimuler“ (“to stimulate”) which is descriptive of the goods covered by the Earlier Right.
The General Court dismissed the appeal and held that the Board of Appeal was correct in their decision. They held that 1) the relevant territory was France given the French Earlier Right relied upon, 2) there were two relevant publics to consider a) the general public and b) a more specialised public with healthcare expertise, 3) the level of attention would range from average to high for the relevant public, and 4) the goods covered were identical and/or similar.
Similarity and likelihood of confusion
The General Court held that the marks shared the same first 8 letters. The first element IMMUNO was fairly descriptive of the goods applied for and had only a weak level of distinctiveness. The lack of distinctiveness does not stop the relevant public from taking it into account especially given its prominence at the beginning of the word and the length of the overall word trade mark. Overall, the Court held that the trade marks were visually and phonetically highly similar.
Conceptually, STIM refers to “stimuler” and STAD has no meaning at all. However, the Court held that as both trade marks shared the same string of letters IMMUNO at the beginning, the trade marks were similar conceptually as well.
The Applicant further argued that the earlier decision had failed to take into account that the relevant public would know the abbreviation STIM. The General Court held however that as long as more than a negligible part of the relevant public would not know the abbreviation then this would suffice to say that there was a likelihood of confusion. There is no minimum quantity needed to constitute more than a negligible amount of the public and it is not necessary to find that there was a likelihood of confusion for the whole of the relevant public.
The General Court dismissed the action and declared the initial decision of the Board of Appeal was valid.
Case Ref: T-403/16