The EU General Court has recently upheld an opposition to a CTM application for FEMIVIA based on its confusing similarity to an earlier mark FEMIBION, both covering goods in class 5.
On the facts of the case, the application for FEMIVIA covered "Pharmaceutical preparations for the prevention and treatment of medical conditions related to the menopause". The opposition was originally allowed by the Board of Appeal (having been rejected at first instance) on the basis of an earlier IR (CTM) designation for FEMIBION (and device) covering "Pharmaceutical preparations; dietetic preparations on the basis of vitamins, minerals, trace elements, oils and fats, either apart or combinations thereof".
The General Court found that, despite the fact that the prefix 'femi' is commonly used in relation to female pharmaceuticals preparations, such an element of weak distinctive character could not be totally ignored when comparing the marks. As such, when comparing the marks, the similarity based on the shared prefix 'femi' was taken into account.
The Court also confirmed the Board of Appeal's approach in assessing the likelihood of confusion from the perspective of the Spanish-speaking public, for whom the marks would have the greatest level of similarity, in view of the fact that the letter "V" is pronounced as "B" in the Spanish language. The reason for this was that the relevant public consisted of professionals and averageEuropean consumers, and under the CTM Regulation, it is sufficient for a relative ground of refusal to exist in only part of the European Union. Having concluded there was a likelihood of confusion on the part of the relevant Spanish speaking public, the Board of Appeal could, for reasons of procedural economy, restrict its assessment to that public.
The judgment reiterates that elements of low distinctive character within a mark will not necessarily be dismissed in an assessment of a likelihood of confusion, and that differences in pronunciation in other EU languages may be determinative, even where the marks themselves are based on English words.