In its decision of 16 July 2014, the
General Court has upheld an opposition
to register as a Community Trade Mark
(CTM) the mark FEMIVIA in relation to
products for the treatment of medical
conditions related to the menopause in
class 5 on the basis of an earlier
figurative mark for FEMIBION (which
covered identical goods).
The Opposition Division had initially
refused the opposition on the grounds
that `fem' had a weak distinctive
character for the relevant goods.
However, the Board of Appeal found
there was a likelihood of confusion from
the viewpoint of the Spanish-speaking
sector of the relevant public (made up of
both the general public and medical pro-
fessionals). This reliance on the Spanish-
speaking public was at the heart of the
trade mark applicant's appeal to the
General Court.
In relation to commonly used prefixes,
the General Court's decision confirmed
that they have a weak distinctive
character and might be understood by
the relevant public as descriptive of the
goods covered by a mark. However, it
could not be ruled out that such
elements hold an autonomous position in
the overall impression conveyed by a
mark and, therefore, they had to be taken
into account when comparing the signs
in issue.
Decision
The General Court confirmed that, in
assessing the likelihood of confusion
between CTM marks, it is necessary to
take into account the perception of the
marks at issue by the consumer of the
goods in question across the whole
European Union. However, it was
sufficient if a likelihood of confusion
existed in only part of the European
Union. Accordingly, the Board of Appeal
was able to find likelihood of confusion
between the marks on the part of the
relevant Spanish-speaking public and did
not need to assess whether the
likelihood of confusion existed in relation
to other parts of the relevant public.
From the viewpoint of the Spanish-
speaking relevant public, the Court
decided there were two principal factors
that affected the comparison of the
marks:
l
The letters v and b were pronounced
identically (both as an English "b").
Accordingly, the respective marks had
a high degree of phonetic similarity.
l
That public would understand the
prefix fem as an abbreviation of the
word femenino meaning feminine and
therefore the marks would be
conceptually similar. The Board of
Appeal had thought the conceptual
comparison neutral.
Accordingly, the General Court
concluded that there was a likelihood of
confusion between the marks despite the
high degree of attentiveness of the
relevant public.
Pharmaceutical prefixes
A quick search on OHIM's database
shows a total of 134 Community trade
marks covering class 5 goods that start
with FEM, 70 of which start with FEMI.
However, it is often the case that earlier
marks whose similarity with later marks
mainly resides in elements of low
distinctive character can still be used to
block the registration and use of those
later marks.
Other recent examples where a
likelihood of confusion has been found
for goods in class 5 include
METABIAREX v METABIOMAK, PROLI-
CO v PROLEC, IMMUNAL v IMMUNOV,
PROVAX v PROBAC.
One of the reasons this is a particular
issue in the pharmaceutical and life
sciences sector is that it is often difficult
to establish that the relevant public, and
in particular the general public,
appreciate the low distinctive character
of the elements in common. This is even
more the case when, as the General
Court confirmed, it is only necessary to
establish a likelihood of confusion in one
territory of the European Union and
therefore the low level of distinctive
character effectively needs to be
considered across the European Union.
Femivia and Femibion confirmed
confusingly similar
Robert Guthrie and Roberto Pescador, London office of King & Wood Mallesons
SJ Berwin
2
Words from the
Chair
The summer (in Europe anyway)
is drawing to a close already and
I hope many of you have been
able to enjoy some lovely
holidays over the last few weeks.
I was fortunate to spend a few
weeks in the US with my family
and saw some fantastic places.
It seems only very recently that
many of us gathered in London
for the Spring Conference and
when you are reading this, it will
almost be time for the Autumn
Conference. Registration for the
Conference was filled very
quickly which I think is
testament to the great
reputation PTMG has for
organising interesting and topical
meetings (as well as picking
fabulous venues and arranging
good social events!).
The programme is now in place
and we have a great team of
speakers lined up to speak on
some very interesting subjects.
I am looking forward to seeing
many of you in Chicago very
soon. I hope the weather is kind
to us; as you probably know,
Chicago is known as the "windy
city"!
Safe travels and see you soon.
Sophie Bodet