Can the granting of applications for trademarks be predicted now?

When registering a trademark for a new product, or when preventing others from registering a trademark similar to yours, several different factors need to be considered. We have previously reported that oHIM has almost always been consistent with the ruling that if the mark has an identical beginning and end, the two marks are considered to be similar. Furthermore, oHIM has also been quite consistent with the opinion that the most important part of the trademark is constituted by the letters at the beginning of the mark, with the explanation that the consumer normally attaches more importance to the first part of trademarks. oHIM has therefore been quite consistent in finding a likelihood of confusion between marks with identical beginnings. But is this the only critical issue in determining the likelihood of confusion? In class 5, where pharmaceutical preparations are registered, this assumption does not always apply since many of the marks have some kind of conceptual meaning or start with a prefix deriving from the preparation’s active substance. An overall assessment must therefore often be made.

In the case MENOCHRON vs. MENODRON (case T-473/11, 28 April 2014) it was found that the trademarks differed in length and rhythm of pronunciation but had an enhanced degree of visual similarity. Both trademarks were registered in classes 3 and 5 and the goods were found to be identical. As a result of this, the differences in pronunciation were reduced and the application was therefore refused. The identical beginning and end of the trademarks seems to have been critical to this outcome, together with the fact that the goods were identical.

However, the indication now that similarity at the beginning of a word is not crucial for determining the likelihood of confusion. In the case of GEPRAL vs. DELPRAL (case T-493/12, 24 September 2014) both trademarks were applied for prescription drugs in class 5. The court stated that the trademarks would be distributed in the same distribution channels but that the attentiveness of costumers in respect of medicines is high. However, they also stated that it was of decisive importance that the therapeutic indication of the products were different and the products were not in competition or interchangeable with one another. The products were therefore considered similar but only to a low degree. Subsequently the court stated, in accordance with its previous practice, that the relevant public pays particular attention to the beginning of a word. However, in this case they found that “Ge” and “Del” were only slightly different visually, which dissimilarity the relevant public was not likely to spot. Although the goods only had a low degree of similarity, the visual and phonetic similarities could lead to the relevant public believing that the medicines came from activities that were economically linked. The application was therefore refused.

We believe that there is very little similarity between “Ge” and “Del” either visually or, more especially, phonetically.  The identical ending therefore seems to have been critical to the outcome. This is even more vital to the decision as the court stated that there was only very low similarity between the products in question.

As we have stated before, it is not possible to predict whether or not the Board of Appeal or the General Court will find two trademarks similar. As it now seems as though there is an opening to not only finding a trademark in the life sciences sector similar if the beginning and end are identical, Setterwalls will continue to follow closely the outcomes of subsequent trademark applications with different beginnings but identical endings tried by OHIM.