Marks held to be highly similar visually based on common final syllable

In Sanofi SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-493/12, September 24 2014), the General Court has annulled a decision of the Second Board of Appeal of OHIM in opposition proceedings between Sanofi SA and GP Pharm SA.

Sanofi opposed the registration of the word mark GEPRAL by GP Pharm SA on the basis of its earlier word mark DELPRAL. Both marks covered goods in Class 5 of the Nice Classification. GEPRAL was intended to be registered for "oncological preparations and preparations for cardiovascular treatments", while DELPRAL was maintained through use for "pharmaceutical preparations for the treatment of the disorders of the central nervous system".

The Opposition Division of OHIM upheld the opposition in its entirety on the ground that there was a likelihood of confusion between the two marks. The Board of Appeal of OHIM came to the opposite conclusion: it found that, in view of a low degree of similarity between the goods, as well as the low degree of similarity between the signs, there was no likelihood of confusion.

On appeal, the General Court held that the degree of similarity between the signs was much higher than what the board had found. Doing away with the often-held assumption that the public normally pays more attention and attaches more importance to the first part of a word, the analysis of the overall visual impression of the signs led the court to the conclusion that the Board of Appeal should have found that there was a high degree of visual similarity. According to the court, the identical element 'pral' outweighed the visual differences.

The judgment confirms that the fact that the goods covered by both marks were medicines led to at least a low degree of similarity between the goods. In order to establish that degree of similarity, the therapeutic indication was the fundamental criterion. 

Paul Steinhauser, Bloemendaal