Medical preparations are not similar to cosmetics, says Board of Appeal

The Metropolitan Board of Appeal has reversed a decision of the Metropolitan Court (Case 3 Pl 26 592/2007/7) in which the latter had refused to register the mark CORPRIL on the grounds that it was confusingly similar to the earlier registered trademarks CORPAL (Case 8 Pkf 28 147/2008/5, February 17 2009).

Ranbaxy Laboratories Limited (located in New Delhi, India) applied for the registration of the trademark CORPRIL for goods in Class 5 of the Nice Classification - namely, pharmaceutical and medical preparations for human and veterinary use. Lidl Stiftung & Co KG (situated in Neckarsulm, Germany) owns two registrations for the mark CORPAL (Registrations 178309 and 548739) for goods in Class 3 (soaps, perfumery, body and beauty products, deodorants, sun protection, hair care products, dentifrices and room sprays). One of the registrations also covers air fresheners in Class 5.

Lidl opposed the application for the registration of CORPRIL on the grounds that it was confusingly similar to its CORPAL marks.

Section 4(1)(b) of the Law on Trademarks states as follows:

"a sign shall not be granted trademark protection if, because of its identity with, or similarity to, an earlier trademark and the identity or similarity of the goods or services, there exists a likelihood of confusion on the part of consumers."

The Board of Appeal held that the Metropolitan Court had correctly found that the marks CORPRIL and CORPAL were similar from a visual point of view and almost identical from a phonetic point of view, as the first syllable ('corp') is stressed in both marks and the difference between 'ril' and 'al' is insignificant. According to the board, the fact that both marks consisted of fanciful words reinforced the likelihood of confusion.

The Board of Appeal further stated that the court had correctly found that:
  • Registration 178309 does not cover goods in Class 5; and
  • air fresheners cannot be confused with pharmaceutical and medical preparations for human and veterinary use.
However, the board held that the court had failed to examine the nature of the goods or their intended use. Moreover, the court had failed to explain why it believed that veterinary products were confusingly similar to cosmetics for human use. The board pointed out that these goods are not sold through the same channels in Hungary. 
Therefore, the board concluded that the average consumer, who is well informed and reasonably observant and circumspect, would not confuse the goods covered by both marks. Consequently, Section 4(1)(b) of the law did not apply.

The board thus overturned the decision of the court and the application for the registration of CORPRIL, which was pending before the Hungarian Patent Office, became effective.
Gabriella Sasvári, SBG & K Patent and Law Office, Budapest

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