- The EUIPO rejected Laboratorios ERN's opposition to the registration of APIAL in classes 3, 4, and 5, based on the earlier 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 goods.
- Market research and certificates dating from 2010, as well as a decision recognizing the brand's reputation dating from 2015, had no probative value.
On March 12, 2022, in Case T-315/21, the General Court dismissed the action brought by the Spanish pharmaceutical company Laboratorios ERN, owner of the APIRETAL trademark, challenging the rejection of its opposition to the APIAL trademark application filed by the German company Nordesta GmbH for goods in Classes 3, 4, and 5.
Background
The opposition was based on two grounds:
- risk of confusion; and
- The trademark applied for would take unfair advantage of the reputation of the earlier trademark or be detrimental to it.
The EUIPO Opposition Division dismissed the opposition on the grounds that:
- there was no likelihood of confusion; and
- The opposing party had not demonstrated that its trademark was well-known.
At this stage, the effective use of the earlier trademark for “antipyretic pharmaceutical products” had been established.
On appeal, the EUIPO Board of Appeal confirmed that there was no similarity between the goods in Classes 3 and 4. However, it found a low degree of similarity between the goods covered by the application in Class 5 (“pharmaceutical products for skin care; nutritional supplements”) and the opponent’s goods (“antipyretic pharmaceutical products”). The opponent’s argument that the latter are a subcategory of the more general “pharmaceutical products” was rejected.
The appeal before the General Court sought to refute the Board of Appeal’s findings to the extent that the opponent contended that there was a likelihood of confusion and that the reputation of the earlier trademark had been established.
Risk of confusion
After conducting a thorough comparison of the goods, the Board of Appeals concluded that there was no similarity between the goods protected by the earlier trademark and those claimed in classes 3 and 4; they did not have the same intended use or nature and were not complementary, even though some of them shared the same distribution channels.
With regard to the goods in Class 5, it concluded that they had a low degree of similarity, since they were used differently and are neither complementary nor in competition with one another. It should be noted that consumers will pay closer attention to this type of product, especially prescription products or those requiring the involvement of a medical professional.
Both trademarks shared phonetic and visual elements, identical syllables, and identical beginnings and endings. Despite these similarities, the Board of Appeal found that the difference of three letters and the difference in length resulted in a low degree of similarity. The General Court agreed.
APIRETAL's Brand Reputation
The Court dismissed as inadmissible a market study and an affidavit from the CEO that predated the filing of the appeal before the General Court. This dismissal was based on Article 188 of the Rules of Procedure of the General Court, which does not permit the subject matter of the dispute to be altered by new evidence.
With regard to the evidence submitted to demonstrate APIRETAL’s reputation—which was rejected by the Board of Appeal—the court ruled that the market studies and certificates dating from 2010, as well as a decision by the trademark office recognizing the mark’s reputation dating from 2015, had no probative value. The relevant date for establishing reputation was September 20, 2018.
Comments
Several important conclusions can be drawn from the General Court’s judgment regarding various aspects of the opposition:
- It is essential that any evidence or argument be submitted at the appropriate stage of the opposition proceedings, except in exceptional cases.
- Even when products fall within the same class of the Nice Classification, they may be considered different if they do not share the same intended use, are not complementary, or are used in a different way. This would rule out any likelihood of confusion.
- Proof of reputation does not last forever. The period of time between the date of the trademark application and the evidence supporting the reputation of the opposing trademark cannot be extended. The reputation of an earlier trademark must be in effect as of the filing date of the application.
This article was originally published in World Trademark Review (WTR) in English on March 28, 2022.