Greater attention paid to beginning of marks highlighted again
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In Mundipharma AG v Office for Harmonization in the Internal Market (OHIM) (Case T-477/08, March 4 2010), the General Court has held that the trademarks AVANZALENE and AVANZ were confusingly similar.
In September 2005 Swiss company Mundipharma AG filed an application for the registration of AVANZALENE as a Community trademark (CTM) for “pharmaceutical preparations for human medical use” in Class 5 of the Nice Classification. Danish company ALK-Abelló A/S filed an opposition on the basis of its CTM AVANZ, which was registered in January 2005 for “pharmaceutical preparations, including pharmaceutical preparations for immunotherapeutic purposes, diagnostic preparations for medical purposes” in Class 5.
The Opposition Division of OHIM rejected the application, considering that there was a likelihood of confusion between the marks. Mundipharma appealed, but on August 28 2008 the Fourth Board of Appeal of OHIM upheld the decision of the Opposition Division. Mundipharma appealed to the General Court.
The parties did not dispute the board's findings that:
- the relevant public consisted of both medical professionals and patients; and
- the goods covered by the marks were identical.
The court also noted that neither Mundipharma nor OHIM disputed that the marks were not comparable conceptually, as neither had a particular meaning.
The court thus focused on the visual and phonetic similarities between the signs. Before the court, OHIM argued that the marks shared five letters, in the same order. In response, Mundipharma stated that, even though the trademarks shared the same beginning, the addition of the ending 'alene' in the mark applied for was sufficient to avoid confusion. Moreover, Mundipharma pointed out that AVANZALENE consisted of 10 letters, while AVANZ was only five-letters long.
To support its arguments, Mundipharma cited two prior OHIM decisions (Case R-632/2001-3, which involved the marks AVANTIME and AVANT, and Case T-66/03, which involved the marks GALA and GALAXIA), in which the marks had been found to be dissimilar. In addition, it stated that the ending 'alene' is not a commonly used diminutive, and is a fanciful term with regard to the goods at issue.
The General Court upheld the decision of the Board of Appeal, taking into account, in particular, the fact that consumers pay greater attention to the beginning of a word mark. The court pointed out that Mundipharma had failed to:
- demonstrate that the ending 'alene' was fanciful and uncommon; and
- challenge the board's finding that the public might believe that the goods covered by the marks came from the same or economically linked companies.
The action was thus dismissed.
Even though Mundipharma took a risk in not approaching ALK-Abelló to obtain its consent, the decision appears to be quite strict. AVANZALENE could have been regarded as a whole from which the beginning 'avanz' was not detachable.
Séverine Fitoussi and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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