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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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FRIDAY, 19 JULY 2013
General Court: Cultra (fig) and Sculptra

In Case T-142/12, the General Court had to review the following marks in conflict:

Fasel Srl (Italy) – CTM Applicant

Aventis Pharmaceuticals, Inc. – Earlier rights in UK, Finland, Hungary, Germany and Czech Republic

SCULPTRA

Class 10: Skin rejuvenation equipment for beauty, cosmetic and medical purposes; ultrasonic cavitation equipment for beauty, cosmetic and medical purposes; pulsed light equipment for beauty, cosmetic and medical purposes; radio-frequency equipment for beauty, cosmetic and medical purposes; mechanised massage equipment for beauty, cosmetic and medical purposes; surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials’.

Classe 5, 10 and 44: Pharmaceutical products for use at health rehabilitation and beauty centres, implants for therapeutic use in cosmetic and aesthetic surgery; plastic surgical implants for therapeutic use in cosmetic and aesthetic surgery; surgery or use of cosmetic, plastic and health rehabilitation surgery, medical beauty treatment services, in particular non-surgical treatment of furrows and wrinkles

The First Board of Appeal and Opposition Division of OHIM dismissed the opposition. In particular, it found that the level of attention of the public was relatively high;the goods or services covered by the trade marks at issue were similar or identical

As regards the signs,the visual similarity between the signs at issue was very low, since the contested CTM started with a rounded figurative element which could be perceived as a capital ‘c’, differed from the beginning of the earlier trade marks; the phonetic similarity between those signs was low, since the word element of CTM, which was simply the word ‘ultra’, and the earlier trade marks coincided only in their last respective syllable, whereas the presence of the ‘s’ and ‘p’ consonants in the earlier trade marks alone created considerable differences; the signs at issue were not conceptually similar, since the earlier trade marks referred to sculpture, whereas the trade mark applied for was merely a laudative formula or could at most, for the public who perceive a ‘c’ at its beginning, refer to culture.

However the General Court annulled the decision and held that in contrast to what OHIM found, the pronunciation of the beginnings of the words ‘cultra’ and ‘sculptra’ by the relevant Hungarian and Czech public is liable to give rise to similar sounds. In addition, whilst it is true that the letter ‘p’, which appears only in the earlier trade marks, will not escape the attention of the public who generally pays greater attention to the beginning of a trade mark.

Since the first syllables of the signs at issue begin with two sounds which are similar for a part of the relevant public and since the second syllables coincide, it must be concluded that, in contrast to what the Board of Appeal asserts, those signs are phonetically similar for that part of that public.

As regards the conceptual comparison, the Board of Appeal did no more than find that those words are conceptually different, without providing any explanation in support of its statement, even though it conceded that they may refer to those concepts of culture, sculpture. Therefore, the Board of Appeal’s finding to the effect that the signs at issue are conceptually different cannot be upheld.

Consequently, the finding of OHIM could not be upheld, since it was founded on the incorrect premisses (see paragraphs 42 to 45, 48 and 49 of the Judgment) that the signs at issue were phonetically similar only to a low degree and that they were conceptually different.

Posted by: Laetitia Lagarde @ 16.43
Tags: General Court, likelihood of confusion, sculptra, cultra,
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