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14 December 2017Big Pharma

Spanish lab loses trademark appeal at EU General Court

The EU General Court has dismissed an appeal from a Spanish laboratory which had sought to have part of a European Union Intellectual Property Office (EUIPO) trademark decision annulled.

The dispute centred on the sign ‘Slimdynamics’, with the word ‘Slim’ in a grey colour and ‘dynamics’ in black.

Liechtenstein-based Ascendo Medienagentur had applied for the mark in 2014 covering class 5, which includes dietary supplements, hygienic preparations and medical preparations.

Laboratorios Ern, a pharmaceutical lab in Spain, opposed the application soon after, based on its earlier Spanish mark ‘Dynamin’.

‘Dynamin’ covers goods in class 5, specifically “Dietetic foods adapted for medical use in any shape or form”.

The Opposition Division of the EUIPO partially upheld the opposition, finding that there was a likelihood of confusion concerning dietary supplements and dietetic preparations, as well as in relation to the medical and veterinary preparations.

Both parties appealed against the decision.

In July 2016, the Fourth Board of Appeal ruled jointly on the two appeals, annulling the Opposition Division’s conclusion that there was a likelihood of confusion for dietary supplements and for medical and veterinary preparations and articles.

“It first of all noted that those goods are intended both for professionals and for the public at large, whose level of attention will be high where medical use is claimed and average where that is not the case,” said the EU General Court.

The Spanish lab appealed against the decision, requesting that the court annul the ruling in part and dismiss the EU trademark application.

According to Laboratorios Ern, there is a likelihood of confusion between the marks at issue for the goods in class 5. It argued that the goods are either identical or highly similar to those covered by the earlier mark.

The lab also claimed that the marks have a “high visual and phonetic similarity” of their dominant elements, namely ‘dynamics’ and ‘dynamin’, for the relevant Spanish public.

On the relevant public, the EU General Court agreed that the EUIPO was right to consider that they were made up of both Spanish professionals and average consumers who displayed a level of attention ranging from average to high.

Laboratorios Ern had argued previously that the goods were highly similar because, although they may be different in nature, they can be produced by the same undertaking or related undertakings and are directed at the same public.

“However, it is sufficient to note that those arguments, apart from not being substantiated, do not suffice to establish that the Board of Appeal’s assessment regarding the similarity of those goods was incorrect. As the applicant itself acknowledges, those goods may be different in nature,” said the court.

Although the court found that the Board of Appeal had erred in finding that the signs were not conceptually similar and the earlier mark had no meaning to the relevant public, it concluded that the signs were of no more than low to average similarity.

The EU General Court also sided with the EUIPO on its finding of no likelihood of confusion, and dismissed the lab’s appeal.

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