No likelihood of confusion between 'lipo' marks
The Estonian Board of Appeal has dismissed Primex EHF’s opposition against the registration of the trademark LIPOSINOL by Inqpharm Europe Limited on the grounds that there was no likelihood of confusion with the earlier LIPOSAN mark (Decision 1350-o, June 28 2013).
On January 28 2005 UK company Inqpharm applied to register the word mark LIPOSINOL in Class 5 of the Nice Classification (Application M201000155). Icelandic company Primex opposed the application based on its prior word mark LIPOSAN (CTM Registration 001387760) in Class 1.
Primex was of the opinion that the trademarks LIPOSINOL and LIPOSAN were visually and phonetically similar due to their identical beginning. It also referred to established case law stating that the beginning of a sign is more important than its ending in the overall impression produced by that sign.
Further, Primex alleged that, as the trademarks had no meaning, the conceptual aspect had no influence on the assessment of the similarity of the signs. It also claimed that the goods covered by the trademarks were similar due to their nature and end users, and that they were in competition with each other. Primex thus contended that the application should be refused under Article 10(1)(2) of the Estonian Trademark Act because LIPOSINOL was highly similar to the earlier mark LIPOSAN, which was registered for similar goods. Therefore, according to Primex, there was a likelihood of confusion.
In response, Inqpharm filed an application with the Estonian Patent Office in order to limit the list of goods covered by its LIPOSINOL mark by excluding medical preparations made from chitosan. In its reply to the opposition, Inqpharm argued that the goods in question were not similar, as chitosan dietary supplements were not of a similar nature as medical preparations not containing chitosan. The applicant also pointed out that the prefix ‘lipo’ had lost its distinctive character, as it means ‘fat’ in Greek or refers to lipids. Therefore, the prefix ‘lipo’ had a descriptive meaning. The applicant submitted evidence showing that the word ‘lipo’ was in use in connection with dietary supplements, as well as goods and services related to the reduction of body fat. The applicant concluded that the trademarks in question were not visually and phonetically similar due to the presence of the distinctive suffixes ‘sinol’ and ‘san’.
The Board of Appeal dismissed the opposition, finding that the trademarks at issue were dissimilar. In particular, the board found that the fact that the marks shared the prefix ‘lipo’ - which is not distinctive - was not sufficient to find that they were confusingly similar.
The board also stated that, despite the fact that the list of goods had been limited by the applicant, the goods covered by the marks were still similar, as they were complementary. However, this was not sufficient to find that there was a likelihood of confusion between the trademarks.
Anneli Kapp, Käosaar & Co, Tartu
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