It is common, especially in the
pharmaceutical sector, to form trade
marks from descriptive terms. One
advantage of such trade marks is the
easier linkage for the user to the
medication's field of application.
The following article examines how trade
marks formed in such a manner can be
enforced in case of infringement according
to current European case law.
According to settled case law, the
likelihood of confusion is greater, the
greater the distinctive character of the
prior trade mark. Which at the same time
means that trade marks that are inspired
by descriptive elements have only a
narrow scope of protection. As shown by
recent decisions of the European courts,
however, this applies only in exceptional
cases.
According to settled case-law of the
European Court of Justice (ECJ), the global
assessment of the likelihood of confusion
must, as regards the visual, aural or
conceptual similarity of the marks in
question, be based on the overall
impression created by them, bearing in
mind, in particular, their distinctive and
dominant elements. It is true that, in
certain circumstances, the overall
impression conveyed to the relevant public
by a complex mark may be dominated by
one or more of its components, such that,
if all of the other components of the mark
are negligible, assessment of the similarity
can be carried out solely on the basis of
the dominant element.
However, it cannot be deduced from that
case-law on exceptional situations that
only the distinctive element of a mark
composed of a descriptive element and a
distinctive element is decisive when
assessing the likelihood of confusion.
This was recently held by the ECJ in its
CLORALEX decision, where the similarity
of the marks CLORALEX and CLOROX
was confirmed. The European General
Court (GC) approved the Board of
Appeal's finding of the distinctiveness of
the CLOR element, which is descriptive of
one of the ingredients of the goods
covered by the mark in respect of which
registration is sought or forms part of the
family of cleaning products. Nevertheless,
the Court held that the marks are
confusingly similar.
The following decisions show that low
distinctiveness of an element in the prior
mark does not play a great role when
assessing the similarity with another mark.
The marks METABOL and METABOL MG
were held to be confusingly similar. The
GC held that although the use of the
word "metabol" in respect of some of the
goods at issue may in fact be regarded as
tending to confer on the earlier mark only
a weak distinctive character with regard to
those goods, the fact remains that the
distinctive character of the earlier mark is
only one factor among others involved in
the assessment of the likelihood of
confusion. Thus, even in a case involving an
earlier mark with a weak distinctive
character, there may be a likelihood of
confusion.
The GC also recognised likelihood of
confusion between ZIEDCON and
figurative mark and CERCON, although
the applicant argued that the earlier sign
CERCON is taken as an indication of the
relevant goods to originate from the
dental sector, since a similarity to the
word ZIRKON exists as shown in the July
2014 GC judgment. The court made
reference to the fact that even if the
earlier mark is presumed to have a weak
distinctive character, likelihood of
confusion would nevertheless exist. The
distinctive character of the earlier marks,
even if it had to be considered in the
assessment of the likelihood of confusion,
would only represent one of the factors
to be considered in this assessment.
Likelihood of confusion was recognised
between the marks FEMIVIA and
FEMIBION as detailed further in the
article on page 2.
The tendency of the European courts to
attach less importance to the distinctive
character of the earlier trade marks can
also be seen in decisions outside of the
pharmaceutical sector. As an example,
likelihood of confusion was recognized
between the word and figurative mark
"alpine" and the contested application
ALPINE PRO SPORTSWEAR &
EQUIPMENT, also a word and figurative
mark, both covering among other things,
goods of classes 18 and 25. The ECJ also
saw likelihood of confusion between
various prior word and figurative marks
with the word component SEVEN and the
contested application SEVEN FOR ALL
MANKIND, although it was held that the
common element SEVEN would possibly
only have weak distinctive character.
Summary
Identity to an element that is not capable
of being protected may cause likelihood of
confusion. This means that what matters
most in the comparison of marks is the
overall impression of a mark, so that
relatively weak, indeed even descriptive
elements are also not completely
unimportant, because they can still play a
role, even if subordinate.
Digression into German law
In Germany, the principle that descriptive
components remain disregarded during
the assessment of similarity of trade marks
and thus do not regularly influence the
overall impression of a trade mark, is
granted greater importance.
Therefore, the German Federal Patent
Court rejected likelihood of confusion of
the marks PANTOPREM and PANTOPAN.
The court recognized that the beginning
syllable PANTO of the opposing mark
referred to the active ingredient
pantoprazol, a proton pump inhibitor,
which is used particularly in
gastrointestinal preparations. The relevant
public would also recognize this.
Therefore, it must be presumed that they
would not place their attention primarily
on the beginning of the marks, but rather
in a particular way also note the additional
word components or endings. Thus in this
specific case, the differences of the
compared marks within the trade mark
endings will not remain unnoticed in the
aural and typographical overall impression.
Assessment of similarity of European trade marks
Does distinctiveness of the prior mark play a role?
Margret Knitter, SKW Schwarz
4