OHIM refuses to cancel mark for antiparasitic goods in controversial decision
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In Evergreen Land v Laboratoire Oméga Pharma France (Case 2816 C, March 2 2010), the Cancellation Division of the Office for Harmonization in the Internal Market (OHIM) has rejected a request for a declaration of invalidity of the Community trademark (CTM) PARAZEET for antiparasitic products in Class 5 of the Nice Classification.
In 2008 Evergreen Land filed a request for a declaration of invalidity of the CTM PARAZEET (Registration 1358027), owned by Laboratoires Oméga Pharma France. The mark was registered for the following goods in Class 5:
“Pharmaceutical and sanitary preparations; parapharmaceutical preparations; preparations for destroying vermin; antiparasitic preparations, parasiticides, fungicides, herbicides, disinfectants for hygiene purposes, insecticides, vermifuges, balms for medical purposes, lotions for pharmaceutical purposes; medicated soap.”
Evergreen argued that the mark lacked distinctiveness because the term 'parazeet' would be pronounced as the French word 'parasite' by French consumers. The word 'parasite' is a common term that is descriptive of antiparasitic products.
As preliminary remarks, the Cancellation Division highlighted several procedural rules, including the following:
- The fact that Evergreen owned earlier rights was irrelevant, as the request for a declaration of invalidity was based on absolute grounds; and
- A natural or legal person is entitled to apply for the revocation of a CTM only if it has the capacity to sue and be sued.
The Cancellation Division then made a detailed examination of the PARAZEET mark to determine whether it could serve to designate any of the characteristics of the goods at issue.
First, the Cancellation Division referred to the BABY DRY decision (Case C-383/99 P), in which the European Court of Justice held as follows:
“Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services, or their essential characteristics, is apt to confer distinctive character on the word combination enabling it to be registered as a trademark.”
The Cancellation Division then analyzed the pronunciation of the PARAZEET mark and came to the following - somewhat surprising - conclusions:
- There was no objective reason to believe that French consumers would pronounce the word 'parazeet' in an English way;
- French consumers would pronounce the letters 'EE' as 'è';
- Even if French consumers pronounced the letters 'EE' as a 'I', the sound would be a long vowel (ie, 'paraziit'), thus differentiating the mark from the word 'parasite'.
- French consumers may pronounce the letter 'Z' as 'dz'.
The Cancellation Division further held that:
- the PARAZEET mark has a specific spelling which differentiates it from the word 'parasite'; and
- it contains the letter 'Z', which is rare in the French language, as well as a double 'E', which is not commonly used in the middle of words.
The Cancellation Division concluded that, although the PARAZEET mark could be evocative of the goods at issue, it was not descriptive. Evergreen's request was thus rejected.
Although it might be possible to understand OHIM's reasoning insofar as it found that the spelling of PARAZEET is original, one may argue that French consumers will pronounce the mark as the French word 'parasite'. French consumers are used to seeing English words with a double 'E' and would not pronounce the letter 'Z' as 'dz'.
Therefore, 'parasite' and PARAZEET are identical phonetically and similar conceptually, so that consumers will perceive the PARAZEET mark as being equivalent to the French word 'parasite'. The distinctiveness of the mark is thus limited, and it is difficult to understand why OHIM adopted such a lenient approach - especially as it is usually quite strict when examining absolute grounds for refusal.
Séverine Fitoussi and Franck Soutoul, INLEX IP EXPERTISE, Paris
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