In Aventis Pharma SA v Office for Harmonization in the Internal Market (OHIM) (Case T-95/07, October 21 2008), the Court of First Instance (CFI) has annulled a decision of the Fourth Board of Appeal, holding that the board had erred in finding that there were significant phonetic differences between the marks PRAZOL and PREZAL which outweighed the low degree of visual similarity between the marks.
In April 1999 Altana Pharma AG (now Nycomed GmbH
) applied to register the word mark PRAZOL for medicines in Class 5 of the Nice Classification
. Aventis Pharma SA
opposed the application based on its earlier word mark PREZAL, which was registered in February 1993 at the Benelux Trademark Office
and covers "pharmaceutical, veterinary and hygienic products" in Class 5. The Opposition Division upheld the opposition on the grounds that there was a likelihood of confusion having regard to the identical nature of the goods concerned and the strong similarity between the marks.
Nycomed appealed. The Fourth Board of Appeal annulled the decision of the Opposition Division. It reasoned that although the goods in question were identical and the relevant public consisted of medical professionals and end-consumers who were likely to be relatively observant in the purchase of pharmaceutical products, there were clear phonetic differences and a low level of visual similarity between the marks. Consequently, the board concluded that there was no likelihood of confusion.
Aventis lodged an appeal before the CFI, claiming that there was a likelihood of confusion between the signs.
First, the CFI found that the board was correct in finding that the relevant public was likely to display an above-average level of attention due to the pharmaceutical nature of the products.
However, in assessing the visual similarities between the marks PREZAL and PRAZOL, the CFI held that the board had erred in finding a low level of visual similarity between the marks. In finding similarity, the CFI considered it persuasive that both marks:
- consisted of a single bi-syllabic word;
- shared identical consonants arranged in identical order; and
- contained the vowel ‘A’.
The CFI rejected assertions made by OHIM and Nycomed and held that the existence of different vowels in the earlier mark (‘E’ and ‘A’) and in the mark applied for (‘A’ and ‘O’) was insufficient to cancel out the impression of similarity.
In addition, the CFI held that there was also a high level of phonetic similarity between the marks. The CFI considered that both marks contained the same characteristic sounds made by the letters ‘P’ and ‘R’ together, the letter ‘Z’ in the middle and the letter ‘L’ at the end.
On a conceptual level, the CFI agreed with the board’s finding that neither of the marks had any particular meaning. This was despite assertions made by OHIM that the relevant public would identify PRAZOL with its active ingredient (lansoprazole) or with the omeprazol family of medicines.
The CFI thus annulled the board’s decision on the grounds that the similarities between the two marks outweighed the dissimilarities. The CFI concluded that although the level of attention among the relevant public was likely to be above average, it was insufficient to counteract a likelihood of confusion due to:
- the identical nature of the goods concerned;
- the lack of meaning attributable to the marks; and
- the strong visual and phonetic similarity of the marks.
The decision highlights the difficulties faced by practitioners in assessing the similarity of marks which consist of many identical letters, yet may sound slightly different.
Eleanor Keogan, FR Kelly & Co, Dublin