Differences insufficient to cancel out similarity created by common initial part

In Bial-Portela & Ca SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-366/11, October 9 2012), the Fourth Chamber of the General Court has upheld an appeal filed by pharmaceutical company Bial-Portela & Ca SA and annulled the decision of the First Board of Appeal of OHIM. The board had considered that there was no likelihood of confusion between the application for ZEBEXIR and the earlier mark ZEBINIX, which both covered goods in Classes 3 and 5 of the Nice Classification.

In September 2009 the Opposition Division had rejected the opposition filed by Bial-Portela, holding that: 

“even though the beginning of the marks under comparison are identical, the remaining parts of the words are so distinctive that they enhance the aural and visual differences; the end of the earlier mark 'inix' only shares the vowel 'i' at the same position with the end of the contested application 'exir'.”

An appeal to the First Board of Appeal of OHIM was dismissed on the same grounds. However, on appeal, the General Court held that the board’s assessment was incorrect.

First, the Court held that the visual and aural differences between ZEBEXIR and ZEBINIX were not sufficient to counteract the visual and aural similarity created by the initial part of the signs.

With regard to the visual similarity, the court noted that the first part of the marks - 'zeb' - was dominant and that the visual differences created by the elements in the middle and end of the marks were not sufficient to cancel out the impression of similarity. In particular, the court noted that the endings of the marks contained the common letters 'i' and 'x', and that the letter 'x' is "visually striking". Consequently, in the court’s opinion, the middle and end of the marks reinforced the similarities between them.

Further, the court disagreed with OHIM’s findings that, since the element 'zeb' is not a prefix and has no particular meaning, the visual and aural similarity created by the initial part of the signs was not relevant. Instead, taking into account its prior case law, the court held that consumers normally attach more importance to the first part of the marks, and that exceptions to this rule apply only in certain circumstances. In particular, the court stated that the argument used by OHIM - namely, that the central elements of the marks were as important as the beginning or end parts - would apply only to the assessment of relatively short marks.

With regard to the phonetic similarity, the court found that the differences between the signs did not preclude some similarity in that respect. The court disagreed with the Board of Appeal's finding that the overall sounds of the marks were different because only the first syllables were the same, while the other syllables were different. The court thus concluded that the marks had a certain level of phonetic similarity.

With regard to the relevant public, the court held that it was composed of the average consumer, who is deemed to be reasonably well-informed and reasonably observant and circumspect. The court noted that almost all of the goods designated by the marks under analysis were directed at the general public, with the exception of certain goods in Class 5 covered by the two marks, which were directed at a professional public. The General Court concluded that, since the general public is considered to be less informed and observant than the professional public, it is the level of attention of the former which must be taken into account.

Finally, turning to the likelihood of confusion, the court stressed that the visual comparison of the signs was especially important, since the goods designated by the mark applied for are normally marketed in supermarkets and therefore chosen by consumers after a visual examination of their packaging.

The decision highlights that it is crucial to draft the description of goods or services cautiously, since this will determine the assessment of the relevant public and, therefore, the chances of success of the registration.

Francisca Ferreira Pinto, Garrigues, Madrid