No likelihood of confusion between ESTEVE and ESTER-E, says CFI

In Laboratorios Del Dr Esteve SA v Office for Harmonization in the Internal Market (OHIM) (Case T-230/07, July 8 2009), the Court of First Instance (CFI) has upheld a decision of the Second Board of Appeal of OHIM in which the latter had dismissed an opposition against the registration of the mark ESTER-E for “vitamin and mineral supplements” in Class 5 of the Nice Classification.

The Ester C Company applied for the registration of the mark ESTER-E as a Community trademark (CTM) for "cosmetics" in Class 3 and "vitamin and mineral supplements" in Class 5. Laboratorios Del Dr Esteve SA opposed the application on the grounds that there was a likelihood of confusion with its earlier figurative CTM ESTEVE for “pharmaceutical preparations, dietetic substances adapted for medical use and food for babies” in Class 5. The opposition concerned only the goods in Class 5.

The Opposition Division of OHIM rejected Ester's application in respect of all the contested goods, namely “vitamin and mineral supplements”. Ester appealed. The Second Board of Appeal of OHIM set aside the decision of the Opposition Division and rejected the opposition in its entirety. The board held that the conceptual differences between the marks would counteract the visual and phonetic similarities between them.

Esteve appealed to the CFI, claiming that the latter should annul the decision of the board and reject Ester's application. Esteve argued that the goods covered by the marks were identical - or at least highly similar - because they had the same purpose, end users and distribution channels. Esteve also alleged that the marks were visually similar because the figurative element of the earlier mark consisted only of a common typeface which was merely decorative. Finally, Esteve argued that the board had taken insufficient account of the fact that the average consumer normally perceives a mark as a whole. Therefore, there was no reason to believe that the average consumer would limit his or her assessment of the mark applied for to the word ‘ester’ and would regard this component as a girl’s name.

The CFI agreed that the goods at issue were of the same nature, had the same end users and were marketed though the same channels. It also ruled that the relevant public in this case were health professionals (doctors and pharmacists) and end users who have a high level of attentiveness.

With regard to the similarities between the marks, the CFI confirmed the findings of the board and held that the marks were similar visually and phonetically. From a conceptual point of view, the CFI noted that the word 'esteve' has no meaning in any language of the European Union apart from Spanish, in which it is a surname. By contrast, the word 'ester' will evoke two immediate associations for the relevant public:

• 'ester' is an organic compound in the field of chemistry; and 
• consumers who are unaware of this meaning will understand the word as a girl’s name.

The CFI thus concluded that ESTEVE and ESTER-E were very different conceptually.

Consequently, the CFI held that there was no likelihood of confusion between the marks and dismissed Esteve's action.

Elke Dichlberger, Sattler & Schanda, Attorneys at Law, Vienna