Low distinctiveness of common prefix does not preclude finding of similarity

European Union

In Bayer Intellectual Property GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-227/13, February 27 2015), the General Court has upheld the findings of the Fourth Board of Appeal of OHIM that Bayer Intellectual Property GmbH's trademark application for INTERFACE in Class 5 of the Nice Classification was confusingly similar to Interhygiene GmbH's prior registration for INTERFOG in Class 5. The General Court found that the Board of Appeal had erred in finding that, on a comparison of the marks, they were conceptually neutral, but this did not alter the finding that, on an overall comparison, the marks were confusingly similar.

On March 3 2009 Bayer applied for a Community trademark for INTERFACE in Class 5 for "preparations for destroying plants and vermin, insecticides, herbicides, fungicides". Interhygiene opposed Bayer's application based on its Community trademark INTERFOG, which was registered for a number of goods in Class 5, including "preparations for destroying vermin; fungicides, herbicides".

On June 23 2011 the Opposition Division of OHIM refused Bayer's application under Article 8(1)(b) of the Community Trademark Regulation (207/2009), finding a likelihood of confusion between the two marks. On February 4 2013 the Fourth Board of Appeal dismissed Bayer's appeal against this decision. Bayer appealed to the General Court, contesting the Board of Appeal's findings that all of the goods in its application were identical to those registered by Interhygiene and that there was a likelihood of confusion between the two trademarks.

The General Court noted that it was agreed between the parties that:

  • the average consumer was, for their purposes, either an end consumer or a horticultural or agricultural specialist; and
  • the average consumer would have a high level of attention in light of the fact that the contents of the products bearing the trademarks may well be dangerous.

Bayer challenged the Board of Appeal's assessment that all of the goods concerned were identical. Bayer took issue with the finding in respect of "preparations for destroying plants" as it encompassed other goods not specified in the earlier trademark. The General Court noted that both fungicides and herbicides fall with "preparations for destroying plants". The court found that, if a broad category of goods is applied for and specific goods in the earlier registration fall within that broad category, the goods are to be considered identical (see Institut für Lernsysteme v OHIM (Case T-388/00, Paragraph 53)).

Bayer also challenged the Board of Appeal's findings that the two marks had an average degree of visual and phonetic similarity, and were conceptually neutral. Bayer argued that the shared prefix 'inter' was generic and low in distinctiveness. The average consumer, Bayer submitted, would accordingly focus on the suffixes 'face' and 'fog'. Bayer also submitted that INTERFACE has a clear meaning which should have been taken into account when assessing the conceptual similarity of the marks.

The General Court found that the Board of Appeal had been correct to find that there was an average degree of visual similarity between the marks. The marks shared the same first six letters and both were almost of the same length. The court also agreed that the marks had an average degree of phonetic similarity. The court agreed with Bayer, however, that there was a conceptual difference between the marks as INTERFACE has a natural meaning, whereas INTERFOG does not (see Jabones Pardo v OHIM (Case T-278/04, Paragraph 64)).

This, however, did not affect the overall assessment that the marks were similar, leading the General Court to uphold the findings of the Board of Appeal. The finding that the goods concerned were identical needed to be offset by greater differences in the marks.

Bayer cited the generic nature of the prefix 'inter' to argue that the prefix was of low distinctiveness and, therefore, the General Court should focus on the suffixes of the marks. The low distinctiveness of the prefix did not prevent the General Court from concluding that the INTERFOG mark as a whole was of average distinctiveness and that, on a global assessment of the marks, the marks were confusingly similar.

Applicants considering a mark which shares a common or generic element with third-party rights should be mindful that potential conflicts should still be assessed on a global basis, and consider whether applying for a narrower specification could help to avoid a similar outcome.

Leigh Smith, Clifford Chance LLP, London

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