CJEU refers Zebinix trademark dispute back to General Court
A long-running trademark case relating to pharmaceutical and cleaning products has been referred back to the General Court by the Court of Justice for the European Union (CJEU) following an appeal.
The General Court had ruled that a decision by the Office for Harmonization in the Internal Market (OHIM) which upheld a community trademark (CTM) belonging to Spanish company Idsin SA, should be annulled.
However, on October 17, the CJEU asked for the case to be reconsidered in light of errors in the General Court’s decision.
The case, Bial-Portela & Ca, SA v OHIM, began in 2008 when Idsin, a Spanish provider of dermatological skin care products filed for a CTM for the word Zebinix.
It was filed under the Nice Agreement for classes 3 and 5, including cleaning products and products for pharmaceutical and veterinary purposes.
The application was opposed in 2009 by Bial-Portela, a Portuguese healthcare company, which said it already had a CTM registered in 2005, for the word Zebixir covering classes 3 and 5.
However, the opposition was dismissed by OHIM on the grounds that, despite common elements including the first three letters and first syllable, the phonetic and visual impressions were different enough to exclude a likelihood of confusion.
Bial-Portela then filed an appeal against the decision with OHIM’s first board of appeal, which was also rejected.
It appealed to the General Court in 2011 seeking an annulment of the OHIM decision and asked for the CTM to be rejected.
The calls for an annulment were accepted but Idsin appealed to the CJEU arguing that the General Court “had not taken all the factors into account,” when assessing a likelihood of confusion.
It demanded that the decision be reversed and that Bial-Portela cover the appeal costs.
Idsin argued that the General Court had not extended its reasoning to all the goods in class 5 when determining a likelihood of confusion.
OHIM backed that argument and further argued that, “even if the reasoning of the General Court were considered to be correct and relevant for the goods expressly referred to by the General Court, it is not correct and relevant for the other goods in Class 5 of the Nice Agreement, namely ‘pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, plasters, material for stopping teeth, dental wax’, which are marketed not in supermarkets but in pharmacies, where the visual similarity is not important.”
The CJEU accepted Idsin’s appeal on that point, saying, “it is necessary to refer the case back to the General Court and to reserve the costs.”
Imogen Fowler, partner at Hogan Lovells LLP in Alicante, Spain, said the General Court’s initial findings were “not objectionable”.
“The remaining goods at issue (pharmaceutical and veterinary preparations etc) are not exclusively sold in pharmacies and even if this were the case, the case-law as regards the importance of the visual and phonetic similarities for pharmaceutical preparations is inconsistent.
“Whilst some decisions suggest that the phonetic and visual similarity are always equally important, other decisions differentiate between prescription and non-prescription drugs.
“Given that neither of the marks at issue is specifically limited to prescription drugs, I consider that the visual similarities are capable to support the General Court’s initial finding.”
