Trade mark practitioners should take note of this recent decision of the General Court in which a finding of a likelihood of confusion between DICAOR for vitamins and the figurative mark DIACOL PORTUGAL for medicines has been upheld. Whilst appreciating that there is a low degree of similarity between these goods, the high degree of similarity between the signs was enough of tip the balance of the scale. The case also offers a reminder that genuine use can be proven without necessarily showing use of the mark as registered.
In 1997, Mr Rath filed an EUTM application for the registration of the word mark DIACOR in Class 5 (food supplements, dietetic supplements, vitamins, minerals). The legal wrangle began in 1999 when Portela & Ca (the opponent) filed a notice of opposition citing an earlier figurative Portuguese mark (below):
The Opposition was upheld following a finding that the opponent had put the earlier mark to genuine use in respect of “antitussive medicines” and that there was a likelihood of confusion between the signs. An appeal to the Second Board of Appeal (BofA) of the EUIPO was dismissed. Mr Rath then looked to the General Court, arguing that the BofA had erred on three points of law.
Mr Rath argued that the BofA did not have the right to base its decision on evidence of use submitted by the opponent – some of which was in Portuguese – which had not been fully translated into English, the language of the proceedings. The GC did not agree; the opponent was under no such obligation. The evidence of use that had been provided was sufficiently accessible to a party with a knowledge of the English language.
Mr Rath argued that the BofA had erred in finding genuine use of the figurative mark DIACOL PORTUGAL as although registered under the Portuguese national classification system for Class 79 covering “pharmaceutical products, bandage materials, disinfectants and veterinary products”, the evidence of use submitted related exclusively to the marketing of a single antitussive pharmaceutical product named Diacol.
The GC disagreed; “antitussive medicines” was a sufficiently precise subcategory of “pharmaceutical products” and therefore, to the extent that the opponent had submitted evidence proving genuine use as regards “antitussive medicines”, the mark would be deemed to be registered only in respect of that category. The BofA could not be criticised for having relied on evidence regarding a product named Diacol and not on the earlier figurative mark due to established case law which permits genuine use to be found, as long as the distinctive character of the mark (as registered) is apparent in the subsequent use. “Diacol” was correctly found to be the distinctive element of the earlier mark.
Likelihood of confusion
Mr Rath argued that there was no likelihood of confusion between the signs. The General Court disagreed. Although the level of attention of the relevant public was relatively high, with the goods relating to the health of end consumers, the high degree of similarity (both visually and phonetically) between the signs was capable of off-setting the low degree of similarity between the goods. The BofA had been right to find that there was on the whole a likelihood of confusion between the marks on the part of the Portuguese public.
Judgment was handed down on 24 January 2017.