ZEBEXIR/ZEBINIX: likelihood of confusion where packaging matters

This morning the General Court of the European Union delivered its judgment in Case T-366/11 Bial-Portela & C^a, SA v OHIM, which annulled the earlier decision of the First Board of Appeal of OHIM.

Background

In 2008 Isdin SA (this being the other party to the proceedings before the Board of Appeal of OHIM and intervener before the General Court) filed an application for a Community trade mark relating to the registration of the word sign ZEBEXIR in the following classes of the Nice Agreement:

–            Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

–            Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.’

Bial-Portela filed a notice of opposition to the registration of ZEBEXIR pursuant to what is currently Article 8(1)(b) of Regulation No 207/2009, because there was already a word mark ZEBINIX registered in 2005 for, among the other things, the goods and services in Classes 3 and 5. 

Both the Opposition Division and the First Board of Appeal of OHIM dismissed the applicant’s opposition in its entirety. In particular, the Board of Appeal held that, notwithstanding the common elements, in particular the first syllable and the first three letters in the two marks, the global phonetic and visual impressions produced by the signs at issue were different and such as to exclude any likelihood of confusion, even for identical goods.

Poppy tries to hide to avoid being
questioned for another consumer survey

Today's judgment

First of all, the General Court recalled that 

"the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered ..." 

In this case the relevant public was found to be composed of the average consumer in the European Union, who is reasonably well informed and reasonably observant and circumspect. This was because all of the goods in Classes 3 and 5 are directed at the general public, with the sole exception of ‘material for stopping teeth, dental wax’ in Class 5 and designated by the two marks, which are directed at a professional public. However, since the general public are considered to be less informed and observant than the professional public, it is the level of attention of the former which must be taken into account.

This said, the Court compared the two signs. While recalling the need for a global assessment of the likelihood of confusion, the General Court highlighted that, in the case of word marks, the consumer normally attaches more importance to the first part of words.

Thus, contrary to the findings of the Board of Appeal, the General Court considered that the signs at issue had a certain level of phonetic and visual similarity. As to the latter, it held that

A slight visual similarity 

"the visual differences created by the central and end parts of the signs at issue, namely the groups of letters ‘inix’ in the earlier mark and ‘exir’ in the mark applied for, are not sufficient to cancel out the impression of similarity created by the common first part ‘zeb’ of the signs at issue ... Furthermore, it must be stated that the common letter ‘x’, which is visually striking, reinforces the similarity created by the common first part of the two signs, notwithstanding the fact that it is not situated in the same position in each of the signs at issue."

In assessing the degree of visual similarity, 

"account must also be taken of the fact that the goods in Class 3 and a large proportion of the goods in Class 5 (namely food for babies, materials for dressings, disinfectants; preparations for destroying vermin; fungicides, herbicides), designated by the marks at issue, are normally marketed on display in supermarkets and therefore chosen by the consumers after a visual examination of their packaging, which means that the visual similarity of the signs is especially important. It must therefore be found that there is a likelihood of confusion between the mark applied for and the earlier mark."