This article was first published in World Trademark Review in January 2011 and was included in the spring 2011 issue of snIPpets - the intellectual property newsletter.
On 16 December 2010, the General Court of the European Union gave its judgment in Longevity Health Products, Inc v OHIM (Case T-363/09).
This decision emphasises the dangers of allowing marks to be compared, and consumer perception assessed, in the abstract: a few key differences may not be enough to prevent a likelihood of confusion being found if enough elements are shared between the marks. The decision also emphasises the importance of using the procedural tools available (here, a request for "proof of use") to increase your chances of success.
The facts and the decision
Longevity applied to register RESVEROL for a wide range of goods in Class 5. The application was successfully opposed on the basis of a registration for LESTEROL covering preparations for treating ateriosclerosis and Longevity appealed.
The goods in Longevity's application were deemed identical and similar to those in the LESTEROL registration, so the assessment of likelihood of confusion turned on the similarity of the marks.
The General Court held that the shared structure _ES_EROL was enough for there to be visual similarity between the marks as, although the initial letters (L and R) were different, this was not sufficient to prevent similarity "since, first, both letters are consonants and, second, the consumer will not stop at the first letter, but will consider at least the first syllable".
The General Court also found that the marks were similar phonetically, as both have three syllables, have the same number of letters, the vowels used are the same and the initial syllables L and R are both constrictive consonants.
The General Court did not consider the effect of the differing medial letters V and T and held that there was a likelihood of confusion. As a result, the appeal was rejected and the application for RESVEROL was refused.
Is the decision correct?
On first view, it could be considered that the assessment of similarity by the General Court suggests a slide backwards towards the salami-slicing approach: by focusing its comparison on the effect of the differing initial letters, it is arguable that the General Court failed to take into account the cumulative effect of the two differing consonants at different parts of the marks.
In addition, it is interesting to note that the General Court elected to put such an emphasis on the vowel sequence at the expense of the consonant elements. Is it really the case that relevant consumers will perceive consonant elements as secondary? It is certainly arguable that the difference between an initial L or R and a medial T or V would be more noticeable to a consumer glancing at the mark than alterations in the vowel sequence, especially for pharmaceutical products, where the suffix -EROL is commonplace.
This last point emphasises the importance of providing a tribunal with evidence about the way relevant consumers would perceive the two marks, to try and prevent the comparison of marks being done in the abstract. Here, no evidence on how the marks would be perceived was filed.
Don’t forget to request proof of use
The opponent's mark LESTEROL had been registered for more than five years at the relevant time. As a result, Longevity could have required "proof of use" to be filed by the opponent as part of the opposition. However, this was not done.
Longevity attempted to raise non-use before the General Court. However, as proof of use had not been requested during the initial opposition proceedings, the use (or otherwise) of the LESTEROL mark was not relevant and the General Court refused to even consider the issue: there is no second bite of the cherry.
If a request for proof of use is not made during opposition proceedings, it may still be possible to run a parallel cancellation action in an effort to remove the earlier marks before the opposition proceedings are completed: and this will result in the opposition falling away if the rights relied on are cancelled. However, this strategy is more costly (there is no fee for requesting proof of use) and more uncertain.
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