No likelihood of confusion between RNAIFECT and RNACTIVE

European Union

In CureVac GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-80/08, October 28 2009), the Court of First Instance (CFI) has upheld a decision of the First Board of Appeal of OHIM in which the latter had rejected CureVac GmbH’s opposition against Qiagen GmbH’s application for the registration of RNAIFECT.

Qiagen applied to register the mark RNAIFECT as a Community trademark (CTM) for goods in Classes 1, 5 and 9 of the Nice Classification. CureVac filed an opposition on the grounds that RNAIFECT was confusingly similar to its earlier CTM RNACTIVE, registered in Classes 1 and 5.

The Opposition Division and the First Board of Appeal of OHIM found that there was no likelihood of confusion between the marks. CureVac appealed to the CFI, raising a single plea alleging infringement of Article 8(1)(b) of the Community Trademark Regulation (40/94) (now Article 8(1)(b) of Regulation 207/2009).

First, the CFI confirmed that in assessing the similarity between the goods covered by the marks, all the relevant factors characterizing the relationship which may exist between them should be taken into account. Such factors include:

  • the nature of the goods;
  • their intended purpose; and
  • whether they are in competition with each other or are complementary.

Taking all the relevant factors into account, the CFI held that the board had been correct in finding that the goods at issue were not identical. The CFI pointed out that although "kits for introducing molecules and molecule aggregates" and "chemicals for medical uses" are highly similar, they are not identical.

With regard to the similarity of the marks, the CFI agreed with the board’s finding that notwithstanding the existence of a similarity resulting from the fact that the first three letters of the marks were identical, the difference between 'ifect' and 'ctive' was so great that there could be no likelihood of confusion.

Visually, the signs both consisted of a single word containing eight letters, the first three of which were written in upper case and were identical. However, this was strongly mitigated by the presence of the last five letters in each word, which were visually very different. The CFI agreed with the board that despite the common component 'RNA', attention would be drawn to the more distinctive end of the words. Therefore, there was no visual similarity between the marks. In relation to phonetic similarity, the CFI found that the endings of the marks created a clear difference in pronunciation.

Regarding the conceptual comparison, it was found that the relevant public would be made up of consumers who had an interest in the goods in question. In respect of the goods in Class 5, this would be pharmacists and end consumers who:

  • are reasonably well informed, observant and circumspect;
  • have a high level of attention; and
  • are assisted in their choice by highly qualified professionals.

In respect of the goods in Class 1, the relevant public would consist of chemists, laboratory staff and other highly specialized personnel with an even higher level of attention than consumers of the Class 5 goods.

It was thus highly likely that the relevant public would perceive the letters 'RNA' as referring to ribonucleic acid or, at the very least, as a component of a chemical or medical nature, even if the exact meaning was not known. The CFI also accepted that, in the pharmaceutical industry, it was not unusual for producers to refer to chemical or molecular compounds to emphasize the alleged effectiveness of a pharmaceutical product.

In respect to CureVac’s arguments that a German consumer would make a connection between 'ifect'  and 'effect' and would then associate it with the word 'active' because the two terms refer to the notion of 'effectiveness' or the word 'effective', the CFI found that consumers would have to deconstruct the word too much to make such an association between the marks.

With regard to the likelihood of confusion, the CFI confirmed that the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details. Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the marks and, therefore, has to place his or her trust in an imperfect picture of them.

The CFI stated that a likelihood of confusion would exist if, cumulatively, the degree of similarity between the marks and the degree of similarity between the goods covered by the marks was sufficiently high. However, in this case, the fact that the goods in question were highly similar was offset by the weak degree of similarity between the marks and the weak distinctive character of the abbreviation 'RNA'. The board had thus been correct in finding that there would be no likelihood of confusion between RNACTIVE and RNAIFECT by the relevant public.

The action was thus dismissed and CureVac was ordered to pay costs.

The decision provides useful guidance on the application of the global assessment of the likelihood of confusion. The judgment confirms that it is the overall impression created by the whole mark that is relevant. Therefore, marks that have identical components can be distinguishable where the other components offset the similarity between the marks.

Rebecca Chant and Chris McLeod, Hammonds LLP, London

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