DNA chain marks held to be confusingly similar

European Union
In Bayern Innovativ - Bayerische Gesellschaft für Innovation und Wissenstransfer mbH v Office for Harmonization in the Internal Market (OHIM) (Case T-413/07, February 12 2009), the Court of First Instance (CFI) has held that the figurative marks LIFESCIENCE and LIFE SCIENCES PARTNERS were confusingly similar.
Bayern Innovativ - Bayerische Gesellschaft für Innovation und Wissenstransfer mbH applied to register a figurative mark consisting of the word 'LifeScience' and, among other things, a helicoidal shape for goods and services in Classes 16, 35, 36, 41 and 42 of the Nice Classification.
Life Sciences Partners Perstock NV opposed, citing its earlier figurative Community trademark (CTM) LIFE SCIENCES PARTNERS (with DNA chain) for services in Classes 35 and 36. The Opposition Division of OHIM upheld the opposition in relation to the services in Classes 35 and 36, which were identical to those covered by Bayer's marks, finding that:
  • the marks were similar; and
  • consequently, there was a likelihood of confusion between them.
The Board of Appeal dismissed Bayer's appeal. Bayer appealed to the CFI.

The CFI considered that the Board of Appeal had been correct in finding that the marks at issue:
  • had a low degree of visual similarity, which was confined to the similarity of the word elements and the helicoidal shape resembling a DNA chain;
  • were very similar phonetically; and
  • were similar conceptually, both because of the word elements and because of some of their figurative elements.  
The CFI referred to Article 12(b) of the Community Trademark Regulation (40/94), under which the right conferred by a CTM does not entitle the proprietor to prohibit a third party from using:
 "indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service."
The CFI noted that:
"[although Article 12(b)] expressly provides for a derogation from the exclusive rights of the mark where the protected mark is used in a descriptive manner, it is clear from the foregoing that no such descriptive use is being made in the present case."
The CFI thus dismissed the appeal.
Jeremy Phillips, IP consultant to Olswang, London

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