Board of Appeal wrongly found that marks were dissimilar overall

In Paul Hartmann AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-342/10, June 13 2012), the General Court has held that, when assessing the likelihood of confusion between two trademarks, the descriptive character of a word element can have no relevance to the assessment of visual and phonetic similarities, where the only factors which must be taken in consideration are those capable of having a specific effect on visual and phonetic impressions.

Applicant Paul Hartmann AG, the owner of the Community trademark MEDINETTE in Class 25 of the Nice Classification, opposed the application for registration of the trademark MESILETTE in Class 5 filed by Mölnlycke Health Care AB.

The opposition was based on all the goods covered by the earlier mark and was directed against all the goods covered by the trademark applied for on the grounds that there was a likelihood of confusion between the marks for the relevant public.

Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), provides that, upon opposition by the proprietor of an earlier trademark, the trademark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected. The likelihood of confusion includes the likelihood of association with the earlier trademark.

By decision of September 15 2009, the Opposition Division of OHIM rejected the opposition on the grounds that, even if the goods at issue could be used in the same place by the same people, this did not make them similar. According to the Opposition Division, the goods covered by the two marks were different, even if Class 25 covers "clothing for professional use and protective clothing for staff and patients in hospitals, as included in Class 25, with the exception of hosiery", while Class 5 covers "medical and surgical plasters; compresses; material for dressings; articles for bandaging; swabs, sponges and abdominal towels for medical and surgical use; lotions and ointments for pharmaceutical purposes; materials for keeping dressings in place".

On October 16 2009 the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision. On May 20 2010 the Second Board of Appeal of OHIM dismissed the appeal on the basis that the marks MEDINETTE and MESILETTE were dissimilar overall because, even though they both covered goods of a medical nature, they were aimed at a professional public with a high level of attention.

In addition, the Board of Appeal stated that, even though the marks shared the suffix 'ette', began with 'me' and were of the same length, they created a somewhat different phonetic impression overall since the first part of the earlier trademark ('medi') was pronounced differently from 'mesil'.

The Board of Appeal found that a likelihood of confusion could not be inferred from the fact that the goods had a “certain degree of similarity”.

The applicant appealed to the General Court, putting forward a single plea in law alleging infringement of Article 8 (1)(b) of the regulation. In particular, the applicant criticised the part of the decision in which the Board of Appeal had compared the signs at issue insofar as it had found no similarity between them; according to the applicant, taking into account the similarity of the goods and the marks at issue, there was a likelihood of confusion on the part of the relevant public.

OHIM, in contrast, sustained that, as the marks had an average degree of similarity and the goods had a very low degree of similarity, the Board of Appeal had rightly found that there was no likelihood of confusion.

According to Article 8(1)(b) of the regulation and established case law, confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services at issue. It must be noted that the applicant did not dispute the board's finding that the goods at issue were aimed at professionals with a high level of attention and, therefore, there was no likelihood of confusion between the goods in question.

In addition, the applicant did not dispute that there was a “certain degree of similarity” between the goods; OHIM pointed out that, by using this expression, the Board of Appeal had intended to stress the low degree of similarity between the goods.

The applicant disputed only the assessment of the Board of Appeal as regards the similarity of the marks. According to the relevant case law, in relation to the visual, phonetic or conceptual similarity of the marks, the global assessment of the likelihood of confusion must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements (OHIM v Shaker (Case C-334/05 P), Paragraph 35).

The applicant claimed that, taken as a whole, the marks at issue were highly similar both visually and phonetically, considering that, according to the relevant case law, the similarity between the marks (phonetic and visual) could be counteracted only by conceptual differences between them. In this case, however, the word 'medi' was not strong enough to counteract the important visual and phonetic similarities.

The court found that the marks were similar taking into account, in particular, the fact that:

• they have the same number of letters;
• the vowels are placed in the same order; and
• the marks begin with the same two letters ('me') and finish with the same suffix ('ette').

The conclusion that there was an average degree of visual and phonetic similarity between the marks could not be weakened by the board's finding that, because of the element ‘medi’ in the earlier marks which alludes to the medical sector, less importance must be accorded to it since the relevant public will focus most of its attention on the suffix ‘nette’. 

In light of the above considerations, the court held that the board had wrongly found that the marks MEDINETTE and MESILETTE were "dissimilar overall". The General Court thus annulled the board's decision and ordered OHIM to pay the costs of the proceeding.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan