General Court confirms its first decision in ZEBEXIR case

In Bial-Portela & Ca SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-366/11 RENV, March 3 2015), the First Chamber of the General Court - after the Court of Justice of the European Union (ECJ) found a failure to state reasons in the General Court’s first judgment and referred the case back to it - once again confirmed that there was a likelihood of confusion between the marks ZEBEXIR and ZEBINIX, which both covered identical goods in Classes 3 and 5 of the Nice Classification. Therefore, the General Court confirmed its first judgment annulling the decision of the First Board of Appeal of OHIM.

In April 2008 Spanish company Isdin SA filed an application for the Community word mark ZEBEXIR for goods in Classes 3 and 5. Portuguese pharmaceutical company Bial-Portela & Ca SA filed an opposition based on its 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 of the marks (in particular, the first syllable and the first three letters), the global phonetic and visual impressions produced by the signs were sufficiently different to exclude a likelihood of confusion.

Upon an action for annulment by Bial-Portela, the (Fourth Chamber) of the General Court upheld the single plea in law and confirmed that there had been infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009). Upon appeal by Isdin, the ECJ wholly set aside the (first) judgment of the General Court and referred the case back to it, finding a failure to state reasons in the General Court’s first judgment.

In its new ruling on the case in its entirety, the General Court again accepted Bial-Portela’s single plea in law alleging infringement of Article 8(1)(b) of the regulation and annulled the Board of Appeal’s decision. The court concluded that there was a likelihood of confusion between ZEBEXIR and ZEBINIX. In particular, the court held as follows:

• Contrary to the Board of Appeal’s finding, ZEBEXIR and ZEBINIX, taken as a whole, were visually similar. The visual differences created by the central and end parts of the signs - namely, the groups of letters 'inix' in the earlier mark and 'exir' in the mark applied for - were not sufficient to cancel out the impression of similarity created by the common first part 'zeb' of the signs. Moreover, the common letter 'X' was visually striking and reinforced the similarity created by the common first part of the two signs, despite not being situated in the same position in each of the signs.
• Also contrary to the Board of Appeal’s finding, ZEBEXIR and ZEBINIX had a certain level of phonetic similarity. In a detailed analysis of the syllables of the respective marks, the General Court stressed that the sound 'eks' in the middle of ZEBEXIR and 'iks' at the end of ZEBINIX had a very similar phonetic impression and were capable of attracting consumers’ attention.
• In the context of the global assessment of the likelihood of confusion, the court found that those errors by the Board of Appeal had an influence on the global assessment of the existence of the likelihood of confusion, as the slight differences between the marks at issue were not sufficient to offset, in the mind of the relevant public, the fact that the goods covered by those marks were identical.

All in all, the reassessment of the case by the General Court resulted in the same substantive conclusion that there was a likelihood of confusion. However, unlike in the General Court’s first judgment, the new decision avoided a detailed analysis of the perception of the various goods at stake (specifically with regard to Class 5) by the relevant public - ie, the imperfect assessment which had led to the setting aside of the General Court’s first judgment. Given the long history of the dispute, it would not come as a surprise if Isdin again brought the case before the ECJ.

Florian Schwab, Boehmert & Boehmert, Munich