Spanish tea brands fight in General Court

The General Court of the EU on Tuesday dismissed a Spanish company’s bid to register ‘Farmasul’ as a Community trademark.

In December 2006, Biodes applied for ‘Farmasul’ in three classes to sell medicinal tea and infusions. The move prompted an objection from Spanish rival Manasul, which owned ‘Manasul’ in the same classes.

OHIM rejected the opposition, prompting Manasul to appeal, before OHIM reversed its decision and refused Biodes the Farmasul registration. It stated that Manasul has a highly distinctive character acquired through use in the Spanish market for tea and infusions, and that there is a likelihood of confusion in Spain between the marks.

Manasul’s mark is written in white letters on black background, framed by an oval shape, while Farmasul’s is typed in black letters on a white background.

On further appeal, the court agreed that despite differences between the first two syllables of the word elements, there is an average degree of visual similarity between the marks. It added that there is a phonetic similarity between the signs and there was no conceptual difference between them.

But it rejected OHIM’s finding that the 'Manasul' mark was distinctive, noting that market research used to indicate distinctiveness of the brand was conducted three years before Manasul registered its mark. The remaining evidence was inadequate, the court said.

Despite this reversal, the court concluded that OHIM was right to conclude that the marks would be confusing.

“It is still the case that marks that are not distinctive are protected and a likelihood of confusion can be found with similar marks,” said Gerard Kelly, associate at Matheson Ormsby Prentice in Dublin. “There is nothing surprising in the General Court’s determination that even though the evidence of an enhanced distinctiveness did not stack up, there was still, all things considered, a likelihood of confusion.”