ECJ sets aside General Court's decision for failure to provide reasons

In Isdin SA v Office for Harmonisation in the Internal Market (OHIM) (Case C-597/12 P, October 17 2013), the Seventh Chamber of the Court of Justice of the European Union (ECJ) has set aside the judgment of the General Court in opposition proceedings on the grounds that the latter had insufficiently stated the reasons concerning the assessment of each good covered by the contested Community trademark application.

In April 2008 Spanish company Isdin SA filed an application for the registration of the Community word mark ZEBEXIR for all goods in Class 3 and 5 of the Nice Classification.

Portuguese pharmaceutical company Bial-Portela & Ca SA filed an opposition based on the earlier Community word mark ZEBINIX, registered for identical goods.

The Opposition Division of OHIM rejected the opposition. The First Board of Appeal of OHIM dismissed Bial-Portela’s appeal, finding that, notwithstanding the common elements, in particular the first syllable and the first three letters, the global phonetic and visual impressions produced by the signs were different.

However, following an appeal by Bial-Portela, the General Court annulled the board’s decision; the court upheld Bial-Portela’s single plea in law and confirmed that there had been infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009). In particular, the General Court held as follows:

• Contrary to the finding of the Board of Appeal, the two signs, taken as a whole, were visually - and, to some degree, also phonetically - similar, as the visual differences created by the central and end parts of the signs were not sufficient to cancel out the impression of similarity created by the common first part of those signs.
• In the context of the global assessment of the likelihood of confusion, account must be taken of the fact that the goods in Class 3 and a large portion of the goods in Class 5 (ie, food for babies, materials for dressings, disinfectants; preparations for destroying vermin; fungicides, herbicides) designated by the marks at issue are normally marketed on display in supermarkets and, therefore, chosen by the consumers after a visual examination of their packaging, which means that the visual similarity of the signs was especially important.

On appeal, Isdin raised five grounds against the General Court’s judgment, but the EJC had to assess only the General Court’s failure to state reasons with regard to the assessment of the likelihood of confusion.

The court followed Isdin’s arguments - supported by OHIM - and stated as follows:

• The same ground of refusal can be given for a category or group of goods or services and may be general for all of the goods or services concerned as far as those goods and services are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogenous category or group of goods or services.
• The mere fact that the goods or services concerned are within the same class of the Nice Classification is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods and services which are not necessarily interlinked in a sufficiently direct and specific way.
• In the present case, the General Court itself drew a distinction between goods within the same class of the Nice Classification on the basis of the conditions under which they are marketed. Consequently, it was incumbent on the General Court to set out reasons for its decision with regard to each group of goods which it had established within that class.

Therefore, the General Court’s reasoning was lacking with regard to the goods in Class 5 other than those listed in the relevant paragraph of the judgment under appeal (ie, food for babies, materials for dressings, disinfectants, preparations for destroying vermin, fungicides, herbicides). The contested decision did not enable the persons concerned to know the grounds on which the General Court based, in that regard, the annulment of the Board of Appeal’s decision.

The decision is striking in that the ECJ annulled a decision of the General Court - which is extremely rare. With regard to its content (limited to a procedural aspect), the decision is not surprising and arguably correct: it is in line with the general case law requiring the General Court/Board of Appeal/OHIM to assess the likelihood of confusion for each and every good/service, and to refrain from giving reasons only in an abstract form.

The decision also shows that the losing party in opposition proceedings should carefully consider the reasoning of the relevant authority and remember the ECJ’s ruling in this case.

Finally, concerning the substantive assessment of the likelihood of confusion between the pharmaceutical marks ZEBEXIR and ZEBINIX, the apparently different standards applied by the first two instances (stricter examination) and the General Court (pro-likelihood of confusion tendency) is noteworthy. 

Florian Schwab, Boehmert & Boehmert, Munich