Bayer’s ELEVIT victorious over ELEVIV in New Zealand Bill Ladas, King & Wood Mallesons, Australia In Bayer Consumer Care AG v DBC, LLC, the High Court of New Zealand has overturned a somewhat surprising decision from the Assistant Commissioner (AC). The decision is interesting in its characterisation of the relevant consumer, particularly considered against the context of OHIM’s recent changes as discussed in the article by Verena von Bomhard and David Slopek, also in this edition of LL&P. word “elevate”), while (according to the evidence) DBC’s mark was “a combination and manipulation of the words “elevate”, “revive” and “vigor”. Factoring also that “the relevant market will be discerning because of the health considerations associated with these kinds of goods”, there was no likelihood of confusion stemming from Bayer’s reputation (17(1)(b)) or its earlier registered mark (25(1)(b)). supported by the evidence, and so the only prudent course to take was to adopt a benchmark of the least discerning consumer. Goddard J also referred by way of support to the decision in Neumegen v Neumegen and Co where the mark UNIVER – applied for in respect of certain cardio-vascular preparations - was considered confusingly similar to the earlier mark UNIVET registered for goods of the same description as one being very much on point and bearing a striking similarity to the facts of this case. Background DBC filed for Elivi in respect of “dietary and nutritional supplements; nutritional shakes for use as a meal substitute; nutritional bar for use as a meal substitute” in class 5. Bayer opposed based on a number of grounds, based on its earlier use and registration of the mark ELEVIT. The ground under 17(1)(b) (passing off and/or breach of the Fair Trading Act) was summarily dismissed. On appeal Lack of similarity between marks causes headache Chris McLeod and Roya Soudbakhsh, Squire Sanders (UK) LLP T2e applicant applied to register BRIMISOL for pharmaceutical products, analgesic compounds in class 5. The opposition was based on the opponent’s earlier CTM registration of PRIBISOL. The opponent asserted that the marks were visually and phonetically similar. The applicant argued that when determining the likelihood of confusion only the first syllables of BRIM and PRIB should be analysed due to the prevalence of the elements ISOL and SOL in the pharmaceutical industry. They claimed that this was supported by the relative dominance of the first syllable when vocalized. The opponent filed evidence indicating that there were no three syllable marks in use in the UK with the suffix ISOL at the time of the application being filed. They also stressed that 6 out of the 8 letters were identical in the respective marks. The hearing officer set out the law, stating that the likelihood of confusion must be judged through the eyes of an average, reasonably well-informed consumer taking into account the imperfect picture of the marks retained in the consumer’s mind. The hearing officer also found that the identity of the consumer would depend on the availability of the product; such that the consumer of a prescription drug would be a medical professional/patient, whereas the consumer for an over-thecounter drug would be the wider public. Goods bearing the opponent’s mark were widely available, resulting in the relevant consumer consisting of physicians, hospital pharmacists and the public instead of “[one] homogenous group”. The public would have more of an imperfect recollection of the mark than that of a medical professional. Following analysis of the two marks, it was the hearing officer’s opinion that the fourth letters of B and M had a large overall impact on the visual and aural similarity between the respective marks, due to their differing sounds and varied appearance resulting in only moderate similarity between the two marks. This was in spite of the initial similarity between the first letters of PRI and BRI. The hearing officer stated that the similarity between two words should be determined on a case by case basis, considering the mark as a whole word and bearing in mind its dominant component, in this case the first syllable. This was in contrast to artificially dissecting each word into distinct parts or counting the number of identical letters. The hearing officer was of the opinion that the impact of the relative differences of the two marks was 12 At first instance, the AC rejected the opposition. Under sections 17(1)(a) (use of applied for mark would be likely to deceive or cause confusion, based on actual use of Bayer’s mark and notional use of DBC’s mark) and 25(1)(b) (notional use of Bayer’s registered marks – in word and in stylised form (as shown below) against notional use of DBC’s mark), the key point was that – considered overall – the marks were dissimilar. This was on the basis that “vit” in Bayer’s mark connoted vitamins (and was also reminiscent of the Goddard J took a distinctly different view and it is important to note here that appeals from the AC amount to a “rehearing on the record”. The respective marks had “marked” similarities to a degree and extent that gave rise to a real risk of confusion under s17(1)(b), including due to similarities in spelling and stylisation eg. the pictorial elements over the “i” in the stylised forms. Goddard J also accepted that the common feature of each mark ELEVI would create an impression that lingered in the mind of consumers to a greater extent than any subtle graphic differences. The dissimilarity in the last letter was of “of negligible impact”. The finding as to the discerning nature of the relevant consumers was not Leaving aside the standard points around assessing the similarities between marks and goods, what is interesting is the approach that Goddard J took in terms of considering the assessment of the likelihood of confusion, by reference to the consumer with least discernment. The reference to this being a matter of evidence is undoubtedly correct, and the approach is similar to that in the line of dynamic cases referred to in the von Bomhard and Slopek article on page 3 in this edition of LL&P, and quite different to the static cases and OHIM’s new practice discussed in that note. Comment Goddard J also overturned the decisions on sections 17(1)(b) and 25(1)(b), ostensibly for the same reasons. crucial; for example, the hearing officer found that the harsh sounds of B and M at the end of the first syllables stood alone and were not softened by subsequent letters resulting in a greater impact on the two words similarity. He compared this to another case where the penultimate letters of the first syllable were different and hence were softened by the final letter, lessening the impact of the difference and causing there to be a greater level of aural similarity. The hearing officer also noted how the pronunciation of the word affected the impact of the differences; for example, if, when enunciated, the differences were stressed then the words were likely to be sufficiently dissimilar. Adding this rationale to the fact that the two marks were conceptually neutral and not obviously distinctive, the hearing officer found that the similarities were insufficient to give rise to a likelihood of direct or even indirect confusion. He stated that “…the average consumer in the UK…will not…[artificially dissect the marks] so as to focus on the similarities…and through imperfect recollection assume that this is the name they know”. As a result, the opposition was rejected, which is perhaps surprising given the arguable similarity between the marks.