- The EUIPO rejected the opposition of Laboratorios ERN against the registration of APIAL in classes 3, 4 and 5, based on the previous trademark APIRETAL in class 5.
- The Court agreed that there was a low degree of similarity between the signs, and no similarity or a low degree of similarity between the products.
- Market studies and certificates dating back to 2010 and a decision recognizing the reputation of the brand dating back to 2015 had no evidentiary value.
On March 12, 2022, in case T-315/21, the General Court dismissed the appeal brought by the Spanish pharmaceutical company Laboratorios ERN, owner of the APIRETAL trademark, against the rejection of its opposition to APIAL's application filed by the German company Nordesta GmbH for products of classes 3, 4 and 5.
Background
The opposition was based on two reasons:
- risk of confusion; and
- the trademark applied for would take unfair advantage of or harm the reputation of the earlier trademark.
The Opposition Division of the EUIPO rejected the opposition on the grounds that:
- there was no risk of confusion; and
- the opponent had not demonstrated the notoriety of its mark.
At this stage, the effective use of the earlier mark for 'antipyretic pharmaceutical products' had been proven.
On appeal, the EUIPO Board of Appeal confirmed the absence of similarity between the goods in classes 3 and 4. However, a low degree of similarity was found between the goods covered by the application in class 5 ("pharmaceuticals skin care; nutritional supplements") and opponent products ("antipyretic pharmaceuticals"). The opponent's claim that the latter are a subcategory of the more general "pharmaceutical products" was rejected.
The purpose of the appeal before the General Court was to refute the arguments of the Board of Appeal in so far as the opponent considered that there was a likelihood of confusion and that the reputation of the earlier mark had been established.
Risk of confusion
The Board of Appeal, after carrying out an exhaustive comparison of the products, concluded that there was no similarity between the products protected by the earlier mark and those claimed in classes 3 and 4; They did not have the same destination or nature and were not complementary, even though some of them shared the same distribution channels.
Regarding the products in class 5, it concluded that they had a low degree of similarity, since they were used differently and are neither complementary nor competing with each other. It should be noted that the level of consumer attention will be higher for these types of products, especially for prescription products or those that require the intervention of a medical professional.
Both brands shared phonetic and visual elements, identical syllables, and an identical beginning and end. Despite these similarities, the Board of Appeal considered that the difference of three letters and the different length gave rise to a low degree of similarity. The General Court agreed.
APIRETAL brand reputation
The Court rejected as inadmissible a market study and a sworn statement by the CEO that predated the date of the appeal to the General Court. This rejection was based on Article 188 of the Rules of Procedure of the General Court, which does not allow the subject of the dispute to be modified by means of new evidence.
Regarding the evidence presented to demonstrate the reputation of APIRETAL that was rejected by the Board of Appeal, the court agreed that market studies and certificates dating back to 2010 and a decision by the trademark office that recognized the reputation of the mark dating from 2015 had no evidentiary value. The relevant date for testing reputation was September 20, 2018.
Comments
Some important conclusions can be drawn from the General Court's ruling in relation to various aspects of the opposition:
- It is essential that any evidence or allegation be presented at the appropriate procedural moment within the opposition procedure, except in exceptional cases.
- Even when products are included in the same class of the Nice Classification, they can be considered different if they do not share the same purpose, are not complementary or have a different method of use. This would rule out a risk of confusion.
- The test of renown does not last forever. The period of time elapsed between the date of the trademark application and the evidence supporting the reputation of the opposing trademark cannot be extended. The reputation of a previous trademark must be valid on the date of filing the application.
This article was originally published in World Trademark Review -WTR in English on March 28, 2022.
