On March 25 2015 the German Federal Patent Court(1) outlined in detail its position on the similarity of goods and services in the pharmaceutical field. The trademarks MEVIDA and MELVITA were found to be so similar as to be capable of causing confusion with regard to the goods and services.
An opposition was filed against the MEVIDA mark registered with the German Patent and Trademark Office for goods and services in Classes 5, 35 and 44 based on the earlier mark MELVITA. The opposition related to cosmetics and pharmaceutical preparations, among other things. The trademark division of the office ordered the partial cancellation of the challenged mark for goods in Class 5, including:
- pharmaceutical and veterinary preparations;
- dietetic substances adapted for medical use; and
For the remainder, the opposition was rejected due to lack of similarity between the goods.
The court considered whether the remaining goods and services in Classes 5, 35, and 44 were similar to the cosmetics and pharmaceutical preparations for which the earlier mark was registered.
Unlike the trademark division, the court did not evaluate the degree of similarity between plasters on the one hand and materials for dressings on the other hand, and pharmaceutical preparations differently, since the product groups were intertwined. In particular, in skin care, overlaps could result in application. Therefore, there was at least a medium degree of similarity between materials for dressings and pharmaceutical preparations.
The services in Class 35 – advertising, business management and office functions – for the later mark were not similar to the opponent's goods. No relevant links could be established to this effect.
The court reiterated its settled case law, according to which there is similarity between goods and services if the target public could gain the impression that goods and services are under the control of the same undertaking. In the retail of goods in Class 3 (including cosmetics and perfumes), it was taken into account that the providers of these items include drugstores and cosmetics chains. Many private labels have been established in this area. Therefore, an average level of similarity was assumed between retail services for the goods in Classes 3 and 5 and the opponent's goods in Classes 3 and 5.
With regard to retail services for goods in Class 10, on the other hand, no similarity was determined.
Medical and veterinary services under Class 44 were held to be similar to the opponent's pharmaceutical and veterinary preparations. There is a typical complementary relationship between the two. Several providers of these services manufacture the products required themselves – for example, naturopaths, alternative medicine practitioners, traditional Chinese medicine practitioners and veterinarians.
Hygiene and beauty care products for humans in Class 44 were also held to be highly similar to the opponent's cosmetics. Hygiene and beauty care products for animals were likewise held to be highly similar to the opponent's veterinary products.
The court affirmed an aural similarity between the marks MELVITA and MEVIDA: they had the same number of syllables and sequence of vowels and matched in accentuation and rhythm of speech. They therefore created a highly similar overall sound pattern.
The decision focused on the evaluation of the similarity between goods and between goods and services in the pharmaceutical field. While the decision may be unsurprising, it was detailed and well reasoned.
For further information on this topic please contact Margret Knitter at SKW Schwarz Rechtsanwälte by telephone (+49 89 286 40 300) or email (email@example.com). The SKW Schwarz Rechtsanwälte website can be accessed at www.skwschwarz.de.
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