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General Court: Biocert v Biocef

In case T-605/11, the General Court dealt with the following opposition

Dr Organic Ltd




Dietary substances and preparations; medicinal health care products; food supplements for dietetic use; nutritional supplements for human beings; vitamins; minerals (nutritional supplements); amino acids (nutritional supplements); plants and herbs for medical or veterinary purposes; herbal preparations for medicinal use; animal and plant extracts, including oils, for medical or veterinary purposes; chemical preparations for medical or veterinary use; naturopathic and homeopathic preparations; tonics; mineral food additives; mineral drinks; vitamin drinks; nutrients and nutriments; medical sprays, patches and other topical formulations; medicated skin care preparations; pharmaceutical preparations and substances; anti-rheumatism belts; bandages, plasters, dressings and wraps; massage and body wraps; oxygen baths; mud for baths; medicinal mud; medicinal oils; thermal water; mineral water salts; eye washes; medicated mouthwashes; slimming preparations; antiseptics; disinfectants; detergents for medical purposes; sanitary preparations; liquid food supplements’ in Class 5

‘pharmaceutical preparations’ in Class 5

OHIM, as confirmed by the GC, found that the goods covered by the marks are either identical or similar; the relevant public is made up of professionals from the medical and pharmaceutical fields and general end consumers in Austria, who demonstrate a heightened degree of attentiveness as regards pharmaceuticals;  the two marks contain the word ‘bio’, a common abbreviation in German of the word ‘biological’ and thus having a descriptive meaning. Consumers’ attention accordingly focuses on the elements ‘cert’ and ‘cef’. Being a descriptive element, ‘bio’ is insufficient for establishing a conceptual similarity between the marks at issue; in view of the average distinctiveness of the BIOCEF mark, the low visual and phonetic similarities between the signs at issue and the heightened degree of attentiveness of the relevant public, there is no likelihood of confusion, even in respect of identical goods.

The General Court annulled the decision of the 4th BoA, recalling first that the assessment of the similarity between two marks cannot be confined to taking one sole component of a complex mark and comparing it with another mark, but that a comparison must be carried out wherein each of the marks in question is examined as a whole. Furthermore, finding of a likelihood of confusion in the present case would not grant the applicant a monopoly on the element ‘bio’, given that the existence of a likelihood of confusion leads solely to the protection of a certain combination of elements without, however, protecting as such a descriptive element forming part of that combination (see Industrias Alen v The Clorox Company)

the visual and phonetic similarities between the marks at issue do not arise only from the presence of the element ‘bio’ in the marks at issue, but also from the almost identical length of the signs and the fact that their first five letters match. In addition, the same letters appear in the initial part of each of those marks.

Thus, given the identical or similar nature of the products, the average degree of distinctiveness of the earlier mark as a whole, it is must be held that there is a likelihood of confusion between the marks at issue, even if the public has an heightened level of attention.

Posted by: Laetitia Lagarde @ 16.34
Tags: General Court, biocert, biocef, pharmaceutical ,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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