The German Federal Patent Court (BPatG) recently upheld an opposition based on the older mark "CinnoVex" against an application for "Sinuvex". In confirming the aural similarity between the two marks, the court also expressly stated that it did not follow the established EU case-law on "neutralization"

The conflicting trademarks were registered for identical and similar goods in classes 5, 29 and 30. The German Federal Patent Court confirmed a danger of confusion on the basis of their aural similarity. The trademark application "Sinuvex" is pronounced as "SI-NU-VEX" in German. As regards the opposition mark "CinnoVex", the court established that the most likely pronunciation in Germany would be "TSIN-NO-VEX" (rather than "CY-NO-VEX" or "CHIN-NO-VEX"). Thus, the marks shared the same pronunciation rhythm and a very similar sequence of consonants as well as of vowels. The aural differences between "SI-NU" and "TSIN-NO" were so slight as to be easily overheard. The court confirmed a danger of confusion on this basis. It duly took into account the increased level of attention of the relevant public, namely medical professionals and consumers who pay more thorough attention to health related products.

The court concluded its reasoning by saying that the visual differences between the conflicting marks were such as in principle to fall under the doctrine of "neutralization". That doctrine was established by the General Court and the Court of Justice of the European Union (see CJEU, C-361/04 – PICASSO / PICARO; ECJ, C-206/04 – SIR / ZIRH). According to the doctrine, existing aural similarities between two marks can be neutralized through obvious visual or conceptual differences, thus on an overall assessment excluding a danger of confusion. In contrast, under German case-law it is sufficient that two marks are similar in merely one aspect – aurally, graphically or conceptually.

With its decisions, the German Federal Court follows the settled German case-law of the German Federal Supreme Court and confirms its decision of 21 April 2009 in Xxero / Zero (24 W (pat) 37/08). The court did not, however, go into the merits of the German approach as compared to the European approach. It remains to be seen whether the different approaches of the EU and the German trademark instances will eventually be reconciled in a harmonized test of confusion.

Case Reference: 30 W (pat) 43/12 of 13 February 2014.

The decision - in German - is available here.