EU court throws out catheter trademark appeal

The EU General Court has upheld a decision to deny Japanese medical device producer Asahi Intecc a trademark for a line of catheters it produces.

In a decision handed down yesterday, November 20, the court upheld two successive judgments which determined that the trademark application for the term ‘Celeson’ was phonetically and visually similar to an existing trademark, and that it covered similar goods.

The earlier mark—for the term ‘Celesio’—is owned by a Stuttgart, Germany-based healthcare company of the same name.

Asahi applied for its mark in 2015 but was met with opposition by Celesio.

Celesio’s mark, registered in 2009, covers the same class as Asahi’s (class 10), for surgical, medical and dental apparatus.

In January 2016, Celesio filed a notice of opposition, which was upheld by the European Union Intellectual Property Office’s (EUIPO) Opposition Division.

Four months later, Asahi appealed against the finding, but the EUIPO’s Fourth Board of Appeal dismissed the appeal.

The appeal board said that “taking into account a high level of attentiveness of the relevant public, there was a likelihood of confusion”. It added that this finding was on account of the identity of the goods and the high degree of visual and phonetic similarity.

Asahi appealed against the decision to the General Court, arguing that the decision should be annulled.

But the court said that Asahi’s appeal must be rejected.

The description of the goods covered by the applied-for trademark was identical to that covered by the earlier mark, said the court.

The court added that it has “repeatedly held” that two marks are similar when, from the point of view of the relevant public, they are at least partially identical in terms of the visual, phonetic and/or conceptual aspects.

Asahi claimed the pronunciation of the suffixes “differs considerably” and that the difference brings a change both to the “syllabic sequence and the vowel sequence”, thereby creating overall impressions which clearly differ.

However the court rejected that claim, concluding that the “significant similarities between the signs at issue cannot be neutralised by the difference referred to by the applicant”.

On the likelihood of confusion, the court added that a significant number of members of the relevant public may only have an imperfect recollection of the earlier mark, so they may think that the Asahi mark is connected with Celesio's business.

“In those circumstances, it is possible [that]… faced with the image of the mark applied for, the relevant public will perceive that mark as an updated and modernised version of the earlier mark,” concluded the court.

Asahi has been ordered to pay Celesio’s costs.

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