THURSDAY, 29 OCTOBER 2009
RNAiFect and RNActive: who would get confused?

The latest appeal by CureVac GmbH to remove the registration of the allegedly infringing sign RNAiFect (belonging to Qiagen GmbH) in reliance on the Article 8(1)(b) of Regulation No 40/94 was dismissed earlier today on a number of grounds.

The CFI found that the goods were in fact partly identical and partly similar as both products related to chemicals used in science (Class 1) and chemicals used for medical usage (Class 5). However, when looking at the issue of similarity between the signs the Court found in favour of the defendant. The visual similarity which followed from the identical letters at the beginning of the signs was mitigated by the last five thus creating difference in visual perception of the marks and the required overall impression. The allegation of phonetic similarity failed too as the endings of the signs were clearly different and could not be pronounced in a confusingly similar manner. With regard to conceptual similarity the Court held that it was a common practice amongst producers of pharmaceuticals to incorporate the chemical compounds into the product's name in order to emphasise the alleged effectiveness of the product. Additionally, since “iFect” could only be related to “active” by a long chain of associations, it was concluded that the signs' endings were sufficiently dissimilar to offset the “RNA” at the beginning.

The CFI held that although the common component (“RNA”) appears first, it does not have a distinctive character thus directing the consumers to look at the signs' endings which are sufficiently dissimilar in the context of an overall assessment. Therefore the great similarity between the goods was “offset by the weak degree of similarity of the signs and the weak distinctive, even descriptive, character of the abbreviation ‘RNA’” thus ruling out the claim of the likelihood of confusion on the part of the relevant public.

Posted by: Sasha Yelnik @ 00.40
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