Court offers clear vision

19th Aug 2021

The BoA was fully entitled to its decision on confusion, reports Eleni Mezulanik.

On 25th January 2017, Olimp Laboratories sp. z o.o. (the Applicant) filed an EU trade mark (EUTM) application for a mark in class 5, covering, inter alia, pharmaceutical preparations for the treatment of eye diseases and conditions and other medical preparations relating to the treatment of eyes.

OmniVision GmbH (the Opponent) filed an opposition under Article 8(1)(b) EUTMR against the EUTM application in respect of all goods on the basis of its EUTM for HYLO-VISION in class 5, covering “Dietary supplements and dietetic preparations; medical and veterinary preparations and articles”. The Opposition Division upheld the opposition on the basis that there was a likelihood of confusion in respect of all goods covered by the EUTM application.

On 4th December 2018, the Applicant filed a notice of appeal with the EUIPO. Bearing in mind that both marks contained the element “vision” and that the element “hydro” in the application had a weak distinctive character in relation to the goods, the Board of Appeal (BoA) of the EUIPO dismissed the Applicant’s appeal. The combination of the element “vision” with the element “hylo” conferred on it an average inherent degree of distinctiveness. Therefore, when considering each mark as a whole, the BoA held that the goods in question were identical, that the signs in question were visually and phonetically similar overall, and, to a certain extent, conceptually similar. Further, no element of the marks could be regarded as being more dominant than another. As such, there was a likelihood of confusion at the very least for a portion of the German-speaking public.

An appeal to the General Court (GC) was filed but was not successful. The Applicant argued that the earlier mark is devoid of distinctive character, that the element “vision” is commonly used in the marketplace by competitors to designate class 5 goods and is therefore descriptive and lacks distinctiveness, and that the marks are different such that there is no likelihood of confusion.

The relevant public was important here: bearing in mind the goods in question, the relevant public consists of medical professionals, pharmacists and patients belonging to the general public. Medicinal products, whether issued on prescription or not, can be regarded as receiving a heightened level of attentiveness on the part of consumers who are normally well informed and reasonably observant and circumspect.

Comparison decisions

The GC did agree that the goods are identical. It considered the distinctive and dominant elements of the marks, bearing in mind the established principle that the comparison of marks must be made by considering each mark as a whole. As such, the assessment of similarity can only be carried out on the basis of the dominant element where all the other components of the mark are negligible. With regard to assessing the distinctive character of an element in a mark, the GC emphasised that account should be taken of the inherent characteristics of the element in question in the light of whether it is descriptive of the goods for which the mark is registered.¹

The GC agreed that the stylistic components of the EUTM application were used primarily for decorative purposes and that the additional figurative element had a weak distinctive character. It further noted that none of the elements of the EUTM application were more visually dominant than the others and that the prefix “hydro” had a weak distinctive character as it was likely to refer to the characteristics of the relevant goods. The element “vision”, common to both marks, was descriptive and had a low degree of distinctiveness.

Further, the GC determined that the element “hylo” of the earlier mark was distinctive and that it was insufficient to conclude that the relevant public would perceive the term as referring to sodium hyaluronate. The low degree of distinctiveness of the element “vision” and the allusiveness of “hylo” were taken into account when assessing the distinctiveness of the earlier mark. It was found that the earlier mark had an average degree of distinctiveness.

Visually, it was held that the marks were similar, sharing nine identical letters and being of similar length. Both marks share “hy” at the beginning and end with “vision”. As such, the differences between the prefixes “hylo” and “hydro” were not sufficient to counteract the similarity of the marks when considered holistically.

Bearing in mind that both marks have five syllables that are similar and that the pronunciation of the marks follows a similar rhythm, the GC agreed that the marks have a high degree of phonetic similarity. The difference in the middle of the marks was not sufficient to outweigh the overall similarities. The marks were considered conceptually similar insofar as “vision” would be understood as being a reference to sight. However, overall, the marks differ conceptually as a result of the different prefixes.

Bearing in mind the above, the GC agreed that the BoA was fully entitled to hold that there was a likelihood of confusion on part of the relevant public.

¹ See the judgments of 13th June 2006, (T-153/03) Inex v OHIM, paragraph 35, and 13th December 2007, (T-242/06) Miguel Cabrera Sánchez v OHIM, paragraph 51.

Key points

The assessment of the similarity of the signs must take into account the overall impression of the marks, regardless of any shared non-distinctive or descriptive elements
The weak distinctive character of an earlier mark cannot, on its own, exclude a likelihood of confusion