23 October 2017Big Pharma

‘SeboCalm’ mark too similar to ‘Sebotherm’, says General Court

The EU General Court has affirmed a decision that a trademark application for ‘SeboCalm’ is confusingly similar to the earlier word mark ‘Sebotherm’.

Ruling on the pharma-related dispute today, October 23, the court affirmed the decision by an appeals board at the European Union Intellectual Property Office on all counts.

Tetra Pharm had applied for ‘SeboCalm’ in 2013, ultimately seeking protection in class 3, which includes cosmetics; hair and body lotions; and shampoos.

Sebapharma opposed the application based on ‘Sebotherm’, filed in 2012 and registered in 2013 for goods in class 3.

In 2015 the Opposition Division upheld the challenge and dismissed the application because there was a likelihood of confusion between the two marks, prompting Tetra Pharm to appeal.

The First Board of Appeal rejected the appeal in 2016, based on six grounds. These included that the two signs had an overall visual and phonetic similarity to an “average degree”.

On the analysis of visual similarity, the board said the two marks had the same first four letters and last letter. It added that the first part of each word—“the part most likely to attract the attention of the public”—was identical.

The General Court said that Tetra Pharm, which agreed that the relevant public was limited to non-English speakers, “essentially” argued that the appeals board incorrectly limited the marks’ comparison to the Slovak, Bulgarian and Estonian-speaking part of the relevant public.

Tetra Pharm also said “it was wrong to hold that there was a likelihood of confusion between the conflicting signs”.

The court noted that the unitary nature of an EU trademark means that an earlier mark is protected in the same way in all member states, “and may therefore be relied on in opposition to any subsequent application to register a trademark” that infringes the protection, “even if it does so only in the perception of the consumers of part of the union”.

In addition, said the court, the level of attention of the relevant public for cleaning and personal care goods “cannot be regarded as high”.

“Contrary to the applicant’s submissions, even if some consumers of those goods might be more attentive at the time of their purchase on account of their skin problems, the fact remains that that is not the case for all consumers.

“Furthermore, the goods covered by the mark applied for are not limited to skin care products, but also include other goods such as toothpaste and cleaning products. For those products, the applicant does not put forward any argument supporting a high level of attention on the part of the relevant public.”

The court concluded that in light of the similarity of the products at issue, the average degree of visual and phonetic similarity, “the lack of meaning of the conflicting signs for part of the relevant public and the average degree of inherent character of the earlier mark”, the Board of Appeal correctly held that there was a likelihood of confusion.

It ordered Tetra Pharm to pay costs.

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