This post contains a case review of T-312/15 in which the General Court discussed issues of the relevant public, comparison of marks and likelihood of confusion.
On 4 September 2012 Market Watch Franchise & Consulting, Inc. (‘MWFCI’) applied to register a EUTM for MITOCHRON in Classes 3, 5 and 35. On 8 April 2013 Glaxo Group Ltd (‘Glaxo’) opposed the Class 5 goods on the basis of Article 8(1)(b) in respect of its earlier UK registration for MIVACRON in Class 5.
The Opposition Division upheld the opposition on 17 December 2013. This decision was appealed and dismissed by the Second Board of Appeal (‘BoA’) on 20 March 2015.
MWFCI bought an action at the General Court (‘GC’) against the dismissal requesting that the GC annul the decision, reject the opposition and order EUIPO to pay costs.
MWFCI relied on one plea; infringement of Article 8(1)(b) meaning that the BoA was wrong to find a likelihood of confusion.
General Court Decision
The GC reviewed the BoA’s findings in respect of the relevant public, goods, marks and likelihood of confusion.
The BoA held that, and GC agreed, the relevant public is composed of professionals in the pharmaceutical and medical sectors and general end consumers, all of which have a high level of attention. Further, as Glaxo has an earlier UK mark, the BoA was correct in assessing a likelihood of confusion on the basis of the relevant public in the UK.
The GC found that MWFCI’s arguments regarding the relevant public were inconsistent: they stated that the relevant public has both a high level of attention and a limited and vague memory of trade marks. Either way, MWFCI’s arguments simply confirmed the position of the BoA.
Comparison of Goods
Neither party disputed that the goods were partly identical and partly similar and therefore this was not assessed by the GC.
Comparison of Marks
The BoA held that the marks were visually similar as they share their first letters, ‘mi’, and last letters, ‘cron’, and are of a similar length. Although the marks differed in their third and fourth letters, and the earlier mark also contains an additional letter, those letters did not alter the overall impression as they are in the middle of the marks.
As the marks have three syllables, the first being identical and last being virtually identical, with the additional ‘h’ of the earlier mark being silent, the differences in the middle syllables are insufficient to alter the impression of phonetic similarity.
Whilst MWFCI argued that the marks are phonetically dissimilar, such that the marks are dissimilar when considered in their totalities, the GC noted that MWFCI failed to indicate precisely what the differences are. Therefore, MWFCI’s arguments that the phonetic dissimilarities outweighed the visual similarities were dismissed.
As the marks have no conceptual meaning, this was not assessed.
Accordingly, the GC held that the BoA was right to find the marks visually and phonetically similar.
Likelihood of confusion
In view of the above, the GC dismissed the action and held that the BoA was right in its assessment when finding a likelihood of confusion. The GC also ordered MWFCI to pay the costs in respect of the matter.
This case reiterates the fact that marks of the same or similar length, with the same or highly similar beginning and end elements, will likely be considered visually and phonetically similar. This should be born in mind when reviewing marks for similarity during searches.
It also highlights the need to ensure consistency in arguments.
Charlotte Wilding 29 September 2016
[The above case review first appeared in the ITMA review – September 2016]