The Court of First Instance also rejected the opposition to a request for a figurative trademark first pronounced by the Office of Harmonization for the Internal Market (hereafter referred to as OHIM) and its Appeal Court on May 17 2013.
On June 13 2006, the company Mundipharma AG applied to register the following device mark:
Registration was requested for class 5, in other words for « pharmaceutical products for human medication, specifically analgesics».
On May 3 2007, Sanofi Pasteur MSD SNC filed an opposition to the aforementioned application based on the following French and international trademarks also in the class 5 category:
French trademark n°94500843
International trademark n° 627401
On July 30 2010 the OHIM Opposition Division rejected this opposition and by a decision of July 22 2011, the Fourth Board of Appeal of OHIM also rejected the appeal.
In making its decision the Board of Appeal based its findings on a comparison between the products and a comparison of the visual device marks.
As concerns product comparison, they are identical and are defined as class 5 “pharmaceutical products”.
In comparing the signs, the Board quoted consistent jurisprudence(1) which states that “any appreciation of the visual, phonetic or conceptual similarity of disputed device marks must take into account the overall impression produced by them, especially taking into account their distinctive and dominant features.”
From a visual perspective, the Appeal Board considered that the visual impression created by the respective signs was quite distinct.
Phonetically, it stated that no evaluation of the signs’ similarity could be established because they were purely figurative and abstract.
Lastly, from a design point of view, the Board considered that neither device presented a conceptual content. The signs were therefore not comparable in this sense.
The Court of First Instance supported the conclusion made at item 23 of the contested decision: the signs are only slightly similar from a visual point of view. As concerns the distinctive character of the previous device marks, jurisprudence recognizes that a mark has a specific, distinctive character either intrinsically or due to the reputation it has established with the general public(2).
In this case the original device marks have a weak distinctive character. They consist of two simple geometrical shapes and do not draw the consumer’s attention.
In addition, the argument based on the distinctive character being enhanced by the use of the original marks must be rejected. In fact, the products concerned by the disputed marks are identical. The device marks themselves are only slightly similar visually and cannot be compared either phonetically or from a design point of view.
The Court of First Instance therefore reached its conclusion that there is no risk of confusion!
(1) ECJ June 12 2002, OHIM C/Shaker C-335/05.
(2) (ECJ November 1 1996, SABEL C-251-95).