Legal Updates

Intellectual Property Law – Community Trade Mark – Visual Difference – Phonetic Difference – Conceptual Difference – Prefixes

The case of Alcon Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case T-106/07) [2008] involved a determination relating to the likelihood of confusion between two Community trade marks. On the 6th of February 2004, Acri.Tec AG Gesellschaft für Ophthalmologische Produkte (“the Intervener”) made an application to register a Community Trade Mark. The application was filed with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”).

The Intervener sought registration for the word mark “BioVisc” in respect of the goods

“Ophthalmic preparations and sterile solutions for intra-operative eye operations” in class 5.

Subsequently, on the 4th of October 2006, the list of goods was restricted to:

“Sterile solutions for intra-operative eye operations”.

The application was also published in the Community Trade Marks Bulletin No 49/2004 of the 6th of December 2004.

Then, on the 7th of March 2005, the applicant company filed a notice of opposition against registration of the mark applied for. The opposition was based on the following earlier registrations:

§ International registration No 553751 for the word mark PROVISC, dated 24 April 1990 (Germany, Spain, France, Italy, Austria, Portugal and the Benelux countries), in respect of “products for use in ophthalmology” in class 5; and

§ International registration No 659615 for the word mark DUOVISC, dated 2 September 1996 (Germany, Spain, France, Italy, Austria, Portugal and the Benelux countries) in respect of “ophthalmic pharmaceutical preparations” in class 5.

The opposition referred to all the goods covered by the earlier registrations. Furthermore it was directed against all the goods covered by the mark applied for.

On the 30th of March 2006, the Opposition Division upheld the opposition in its entirety. It reached the decision that considering the visual and phonetic similarities of the marks in question, and due to the fact that the goods concerned were identical, there was a likelihood of confusion.

Subsequently, on the 17th of May 2006, the Intervener filed an appeal with OHIM against the decision reached by the Opposition Division. Then, by a decision that was reached on the 8th of February 2007 (“the Contested Decision”), the Second Board of Appeal annulled the Opposition Division's decision. The Second Board of Appeal also saw fit to grant the application for registration.

The Second Board of Appeal reached that decision as it was of the opinion that the existence of visual, phonetic and conceptual differences between the signs in question was sufficient to exclude any likelihood of confusion on the part of the relevant public.

The applicant company appealed against the Contested Decision, and sought an annulment alleging the infringement of Article 8(1)(b) of Council Regulation (EC) 40/94 (“the Regulation”).

OHIM and the Intervener argued that the applicant company's appeal should be dismissed.

The court held as follows:

Firstly, under Article 8(1)(b) of the Regulation:

“…Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for was not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there existed a likelihood of confusion on the part of the public in the territory in which the earlier trade mark was protected.”

Secondly, it was held that under Article 8(2)(a)(iii) of the Regulation “earlier trade marks” meant:

“…Trade marks registered under international arrangements which had effect in a member state with a date of application for registration which was earlier than the date of application for registration of the Community trade mark”.

Additionally, the likelihood of confusion as to the commercial origin of the goods (or services) should be assessed globally. The assessment should be carried out according to the perception that the relevant public had of the signs and the goods or services concerned. The assessment should also take into account all the factors relevant to the circumstances of the case - particularly the interdependence between the similarity of the trade marks and that of the goods (or services).

In this case, the Intervener's goods were included in the description of the applicant company's goods, and were therefore deemed identical by the court.

With regards to the visual comparison of the signs in question, the Second Board of Appeal had rightly decided that their suffixes “visc” were identical and the difference concerned the prefixes. The court states that consumers typically attached more importance to the prefixes.

The prefixes in question were “bio” for the mark that was applied for by the Intervener and “pro” and “duo” for the earlier marks as registered by the applicant company. Therefore the court was of the opinion that the signs in question had clear differences which did not justify the conclusion that they were visually similar.

Furthermore, the prefixes were not deemed phonetically similar for the average consumer, and as such, it was held that the differences between the signs in question were sufficiently significant to change their perception from a phonetic point of view.

Accordingly, the court held that the differences between the signs in respect of their prefixes were sufficient to prevent a visual similarity being found.

The signs in question were also deemed to have different conceptual meanings which the relevant public would be able to perceive and comprehend. Therefore, the court also held that there was a conceptual difference between the signs. This meant that in the circumstances of the case, the Second Board of Appeal had correctly reached the decision that the existence of visual, phonetic and conceptual differences between the signs was sufficient to exclude any likelihood of confusion on the part of the relevant public. Accordingly the action would be dismissed.

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© RT COOPERS, 2009. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.