A recent ruling from the Federal Court of Appeals in Civil and Commercial Matters, rendered on September 18, 2013 in re “Microsules Argentina S.A.. v. Química Medical Argentina S.A.I.C.”, comes to reaffirm the basic standards for trademark confusion analysis.
Microsules Argentina applied for registration of the trademark “BYEGRIP” covering anti-infective and respiratory drugs in International Class 5. Química Medical Argentina subsequently filed a notice of opposition on the basis of likelihood of confusion with its registered trademark “BIO-GRIP”, also in International Class 5. Microsules Argentina brought legal actions in court seeking that the opposition be declared groundless.
The Federal Court of First Instance admitted the opposition filed by Química Medical Argentina and thus dismissed the complaint. Microsules Argentina challenged the ruling before the Federal Court of Appeals in Civil and Commercial Matters, arguing that the conflicting trademarks were sufficiently different so as to allow coexistence in the relevant market.
In a unanimous decision Division 2 of the Federal Court of Appeals upheld the ruling.
In so deciding, the Court of Appeals went over the basic rules for trademark confusion analysis. That is: a) coexistence requires that the conflicting trademarks be clearly different; b) courts must focus on the similarities rather than the differences; c) a single similarity in either of the three levels of analysis (sound, appearance and meaning) justifies refusal of registration; d) when the solution is doubtful (other than the mere doubt generally arising from these conflicts), courts must always favor registered trademarks over pending applications; and e) the spontaneous impression caused by the marks involved is a valuable indication of whether or not they are likely to be confused.
Based on these premises, the Court of Appeals held that the conflicting trademarks were both graphically and phonetically similar. The Court also gave special weight to the fact that the both trademarks were words in a foreign language, thus eliminating all possibility of a distinction based on meaning. Lastly, the Court also rejected the appellant’s argument that the common use of the term GRIP in Class 5 justifies coexistence, as the applicable case law requires that the remaining portion be sufficiently distinctive to rule out likelihood of confusion.
This decision is not particularly innovative or pioneering but it is nonetheless a useful recapitulation of applicable trademark analysis rules and standards.