On the 11th of April 2013, the Court of Justice of the European Union in the case of ASA Sp. Z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) has pronounced itself on the likelihood of confusion existing between the trademarks FEMIFERAL and FEMINATAL both filed in class 5 concerning pharmaceutical products for children.
The company ASA Sp. Z o.o. has filed the trademark “FEMIFERAL” with OHIM on 18 September 2006; however, Merck sp. Z o.o. who is the proprietor of the prior trademark FEMINATAL has rapidly initiated an opposition proceeding. OHIM has then ruled in favour of Merck sp. Z o.o. on 19 November 2010.
The company ASA Sp. Z o.o. has challenged the OHIM and the General Court of the European Union upheld through the decision of Asa/OHMI – Merck on the 22nd May 2012 rejecting all its demands; formed an appeal in front of the Court of Justice of the European Union (CJEU).
The Court rejected the appeal ruling that the trademarks were similar and constituted a likelihood of confusion. The Court did not retain the argument that the prefix “FEMI” will be understood by average consumers as being products dedicated to women, hence, despite of its location in the pharmaceutical field, it is referring to average consumers and not to the relevant public.