Although Community trademarks cover all EU member states and the relevant public consists in the present case of professionals and average European consumers, Spanish ladies were the deciding factor in the OHIM opposition case at issue between a Canadian trademark applicant and a German Opponent.
Por que? Because it is supposed to be common knowledge that the average Spanish public is not familiar with the English language. It follows that if, on the part of the relevant Spanish-speaking public, there existed a likelihood of confusion between the marks at issue, the assessment of such a likelihood of confusion could, for reasons of procedural economy, be restricted to that particular part of the relevant public.
In 2010 Community trademark registration was sought for the word sign FEMIVIA for goods in class 5; “preparations for the prevention and treatment of medical conditions related to the menopause”. Against this application an opposition was filed, which was, among others, based on Community word mark for FEMIBION.
In first instance the Opposition Division rejected the opposition in its entirety. The similarity of the signs FEMIVIA and FEMIBION is primarily based on the prefix ‘femi’, which has a weak distinctive character for the goods at issue.
Appeal was filed and the Fourth Board of Appeal of OHIM upheld the appeal, annulled the decision of the Opposition Division and rejected the Community trade mark application. According to the Fourth Board of Appeal, there was a likelihood of confusion between the marks on the part of the relevant Spanish-speaking public because of the identity of the goods, the average visual similarity and high degree of phonetic similarity of the signs (in Spanish the letter ‘v’ is pronounced like a ‘b’). Regarding the prefix ‘fem’ it was found not to be descriptive for the goods in question.
The applicant disputes the findings of the Board of Appeal. According to the applicant the prefix ‘femi’ is descriptive for goods in Class 5. Therefore the comparison of the signs ought to be made on the basis of the distinctive and dominant components, namely ‘bion’ and ‘via’.
The Board of Appeal considers otherwise and founds that the prefix ‘fem’ would not be perceived as being descriptive for the goods covered by the mark applied for. Even though these goods are intended for the prevention and treatment of medical conditions related to the menopause, by which only women are affected. In this respect it is even regarded that the Spanish word ‘femenino’ means ‘feminine’.
Nevertheless, it was found by the Board of Appeal that the inherent distinctive character of the mark FEMIBION was normal with regard to the goods in Class 5. Thus, for the Spanish speaking public the signs at issue have an average degree of visual similarity, a high degree of phonetic similarity and a certain degree of conceptual similarity. Therefore the Appeal was upheld and Community trademark application FEMIVIA was rejected.
Why OHIM has a partiality to the Spanish public, we can only guess. What we do know, however, is that the influence of the Spanish public, or EU public which is not familiar with the English language, must not be underestimated in OHIM opposition cases. This case also shows that what a Spanish girl wants, is obviously of importance.
Nevertheless, it should be kept in mind that what seems to be descriptive or at least less distinctive for one part of the EU public, could be seen as a mark with a normal scope of protection by the other part of the public.