Element with weak distinctive character may still attract relevant public's attention

European Union

In Novartis AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-605/11, December 10 2014), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the marks BIOCERT and BIOCEF.

Dr Organic Ltd filed an application for the registration as a Community trademark of the word sign BIOCERT for goods in Class 5 of the Nice Classification. Novartis AG filed a notice of opposition in respect of all of the goods based on its earlier Austrian word mark BIOCEF, which also covered goods in Class 5.

The opposition was dismissed by the Opposition Division of OHIM in its entirety. The Opposition Division considered that the relevant public would distinguish between the signs at issue in view of the difference between the elements ‘cef’ and ‘cert’. This decision was confirmed by the Fourth Board of Appeal of OHIM, which found that, in view of the average distinctiveness of the BIOCEF mark, the low visual and phonetic similarities between the signs at issue and the heightened degree of attentiveness of the relevant public, there was no likelihood of confusion, even in respect of identical goods. An important element of both decisions was the consideration that the element ‘bio’ is descriptive for pharmaceutical products.

On appeal, the General Court annulled the board's decision on the ground that it infringed Article 8(1)(b) of the Community Trademark Regulation (207/2009). The court considered that the visual and phonetic similarities between the marks at issue did not arise only from the presence of the element ‘bio’, but also from other factors, such as the almost identical length of the signs and the fact that their first five letters matched. Given the identical or similar nature of the products and the average degree of distinctiveness of the earlier mark as a whole, there was a likelihood of confusion between the marks at issue, even if the public has an heightened level of attention.

Further, the court held that, although the element ‘bio’ is descriptive in respect of the goods covered by the marks, the fact remained that the weak distinctive character of an element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public. Thus, it could not be excluded that, because, in particular, of its position in the sign or its size, such an element held an autonomous position in the overall impression conveyed by the mark in the relevant public’s perception. Therefore, the element ‘bio’ also had to be taken into account when assessing the phonetic and conceptual similarity of the marks.

Paul Steinhauser, Bloemendaal

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