BIOVISC dissimilar from PROVISC and DUOVISC for identical goods

European Union
In Alcon Inc v Office for Harmonization in the Internal Market (OHIM) (Case T-106/07, September 10 2008), the Court of First Instance (CFI) has held that there was no likelihood of confusion between the trademarks BIOVISC on the one hand, and PROVISC and DUOVISC on the other.
*Acri.Tec AG Gesellschaft für ophthalmologische Produkte applied for the registration of the mark BIOVISC as a Community trademark. The application was opposed by Alcon Inc based on its earlier registered trademarks PROVISC and DUOVISC.
The Opposition Division upheld the opposition on the grounds that there was a likelihood of confusion between the marks under Article 8(1)(b) of the Community Trademark Regulation (40/94). The Board of Appeal annulled the Opposition Division’s decision and granted the application for registration. Alcon appealed to the CFI.
One of the main issues in this case was the definition of the relevant public. The application for the registration of BIOVISC covered “sterile solutions for intraoperative eye operations”, which were considered to be identical to the goods covered by the earlier marks. The CFI found that the goods at issue were not mass consumption items, but very specific products used for medical purposes. Thus, the goods were purchased by professionals “who can be expected to take more care when purchasing and notice differences which might not be perceived by a normally circumspect consumer”. The Opposition Division, on the other hand, had found that the relevant public also comprised end consumers, as the specification of the goods was not restricted to prescribed drugs.
In assessing the similarity between the marks, the CFI held that even though the prefixes of the marks ('bio', 'pro' and 'duo') are rather common, the differences between these prefixes were sufficient to rule out a visual similarity and to distinguish the marks phonetically. In addition, the CFI found that the marks had different conceptual meanings, which the relevant public could perceive and understand. 
Another interesting issue was whether the relevant public might perceive the trademark BIOVISC as being part of a series of marks belonging to Alcon. The fact that Alcon owned two marks - PROVISC and DUOVISC - ending with the suffix 'visc' supported such argument. In fact, the Opposition Division had held that “the Community trademark application [BIOVISC] could be perceived as belonging to a range of goods of the opponent”.
While this argument might be true in some cases, it could pave the way for an excessively broad protection of elements of trademarks, rather than the trademarks themselves. In other words, if an entity is unable to register a certain suffix as a trademark, it might register a series of marks comprising that suffix and then prohibit competitors from using marks comprising the same suffix, irrespective of whether those marks are confusingly similar to any of the registered marks.
Fortunately, the CFI did not uphold the Opposition Division's finding that the marks at issue could be perceived as belonging to a range of goods. The CFI concluded that despite the identity of the goods concerned, the differences between the marks at issue were sufficient to preclude a likelihood of confusion as to the origin of the goods concerned.
Alcon's action was thus dismissed.
Lisbet Andersen, Bech-Bruun, Copenhagen

Unlock unlimited access to all WTR content