Enforcing trademark rights in signs of a purely graphic nature proves to be difficult especially in the context of a Community proceeding. The decision of the General Court of May 17, 2013, (Case T-502/11) shows that difficulties are increased when the arguments are only limited to raising a ‘high distinctiveness’ of a logo trademark without going deeper enough into the argumentation raised….   

On June 13 2006 Mundipharma AG applied to register the following device as a Community trademark in respect of “pharmaceutical products for human medicine, namely analgesics” in Class 5:

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On May 3 2007 Sanofi Pasteur MSD filed an opposition based on the following earlier French and international device marks covering “pharmaceutical products” in Class 5:

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On July 30 2010 the Opposition Division of OHIM rejected the opposition. The Fourth Board of Appeal of OHIM further dismissed the appeal on the grounds that:

  • the visual impression created by the marks was dissimilar;
  • the earlier marks enjoyed a limited degree of protection due to:
    • the simplicity of the geometric shapes at issue;
    • Sanofi’s failure to demonstrate that the weak distinctive character of its marks had been increased through use or by mean of the reputation of the earlier marks.

On appeal, the General Court confirmed that there was no likelihood of confusion between the marks.

Indeed, the Court considered that Sanofi had merely stated in an abstract manner that the “high distinctiveness” of its marks should be taken into account, without indicating whether such distinctiveness had been “increased through use”, “increased by the reputation” of the marks, or resulted only from the inherent distinctiveness of the marks for the products involved.

 The Court confirmed that the visual impression of the marks was different, because:

  • the contested trademark consisted of thick sickles with sharp ends, while the earlier marks consisted of thin ribbons that were cut to fit into a rectangular frame;
  • the graphic elements of the earlier marks created the impression of a harmonious and fluid shape, while those of the contested mark produced chunkier and heavier forms; and
  • the ribbons of the earlier marks unfold lengthways, while the shape of the mark applied for was almost equal in length and height.

In this particular case, the products were identical so the decision all the more shows how difficult it can be to successfully enforce trademark rights on the Community level including in an opposition proceeding. But it is more on the side of the importance of the extent, content and choice of wording for the arguments before the General Court, that the decision stresses on.