EGIS applied to the Moldavian Trade Mark Office (AGEPI) for registration of the international trade mark FEMINEGI for "pharmaceutical preparations for gynaecological purposes" in Class 5. AGEPI issued a provisional refusal on the ground that it was similar to the earlier registered trade marks FEMINELLA and FEMINEX for products in the same Class.

EGIS appealed, arguing as follows:

* FEMINEGI could not be considered to be similar to either FEMINELLA or FEMINEX, taking into consideration: the difference in size between the trade marks;

* the lack of conceptual similarity between the marks, due to the fact that none of them had a meaning;

* the fact that the ending of the FEMINEGI mark, 'egi', was a shortened version of the name of the applicant, EGIS; and

* the fact that the trade marks had only the element 'femin' in common which, in the local understanding, was linked to the terms ‘woman’ or ’womanhood’;

* the products were dissimilar (ie, "pharmaceutical preparations" v "pharmaceutical products");

* there was no likelihood of confusion, including no likelihood of association; and

* Moldova was the only country to have issued a provisional refusal on such grounds.

AGEPI accepted the grounds of appeal and issued a final decision in favour of EGIS, overturning its provisional refusal.

This final decision is important not only for EGIS, which is now able to use the trade mark in all the countries where protection was sought via its international registration, but also as a precedent. Arguably, AGEPI will take this decision into account in future similar cases.

Source: note for World Trademark Review,20 February 2014, by Nicolae Muresan (Andra Musatescu Law & Industrial Property Offices, who represented EGIS in this matter).