General Court: imperfect recollection of earlier mark imputes likelihood of confusion, even for specialised and highly attentive public
- Celesio opposed registration of CELESON in Class 10 based on earlier mark CELESIO also in Class 10;
- Board of Appeal found that there was likelihood of confusion, despite high level of attentiveness of relevant public;
- Court agreed, finding that there was risk that significant number of members of relevant public would have imperfect recollection of earlier mark.
In a fairly straightforward application of the likelihood of confusion ground of opposition under Article 8(1)(b) of Regulation 2017/1001, the General Court has refused an appeal by Asahi Intec Co Ltd (‘the applicant’) from the Board of Appeal’s decision to uphold the European Union Intellectual Property Office (EUIPO)’s finding of successful opposition by Celesio AG, as owner of the word mark CELESIO, against Asahi’s trademark application for the word mark CELESON for similar goods in Class 10 (Asahi Intec Co Ltd v EUIPO (Case T-36/18)). Although the General Court recognised that the medical specialist public would pay a high level of attention to the respective marks, it found that the doctrine of imperfect recollection meant that a risk of a likelihood of confusion could not be ruled out.
Background
The trademark CELESIO was registered under an international registration designating the European Union in 2009 in Class 10 for “surgical, medical, dental and veterinary apparatus and instruments; artificial limbs; eyes and teeth”. Asahi applied for the mark CELESON also in Class 10 for the following goods:
Surgical, medical and dental apparatus and instruments and their parts and accessories; medical guidewires and their parts and accessories, IVR (interventional radiology) guidewires; PTCA (percutaneous transluminal coronary angioplasty) guidewires; plastic clad guidewires; medical catheters and their parts and accessories; PTCA (percutaneous transluminal coronary angioplasty) guiding catheters; PTCA balloon catheters; angiographic catheters; athrectomy catheters; stents and their parts and accessories.
Comparison of the goods
The applicant argued that a general term is insufficient to show that goods are similar. It submitted that, as a consequence, the description of goods for its application, in particular specified goods for the catheter treatment of coronary artery disease and “stents and their parts and accessories”, were not similar to the goods covered by the earlier mark, namely “medical apparatus and instruments”, since the latter imprecise and broad term did not allow a specific comparison with regard to its purpose and method of use.
The General Court gave this argument short shrift, finding that the general description of “medical apparatus and instruments” is sufficiently clear and precise to determine the scope of the earlier mark in Class 10, and found that the Board of Appeal was correct in finding that apparatus for the catheter treatment of coronary artery disease and “stents and their parts and accessories” are covered by the broader category of “medical apparatus and instruments”.
Relevant public
Based on the highly specialised nature of the goods concerned, the Board of Appeal found that the relevant public were specialists in the medical and surgical fields with a high level of attention, and this finding was endorsed by the General Court.
Comparison of the signs
The applicant argued that the two marks differed in their respective suffixes, ‘on’ and ‘io’, which had a strong influence on the visual characteristics of the signs because:
- the marks were short;
- the visual presentation allowed consumers a longer perception of the marks and of their different endings; and
- the overall visual impression of a sign can also be characterised from the ending of a sign.
The General Court found that the marks share the same first five letters in identical format and have six of their seven letters in common. As the first part of each mark has no conceptual meaning and is not likely to be broken down into constituent elements, and because the marks diverge visually only in respect of one letter, then the difference was of secondary importance and was not sufficient to outweigh the similarities. Based also on the established principle that consumers generally pay greater attention to the first part of a mark than the last part, the General Court found that the Board of Appeal was correct in its finding that the overall impression produced by the signs at issue was highly similar from a visual perspective.
From a phonetic point of view, the General Court also endorsed the Board of Appeal’s finding that the beginning five letters of either mark were identical and would be pronounced in the same way throughout the European Union, and that the significant similarities between the marks could not be neutralised by the differences in the respective suffixes, as argued by the applicant. As a result, the General Court found that the respective signs also produced a highly similar overall impression from a phonetic perspective. As far as conceptual similarity was concerned, it found that neither of the signs had any meaning for the relevant public and, therefore, the conceptual comparison remained neutral.
Likelihood of confusion
As far as likelihood of confusion was concerned, the applicant argued that, based on the high level of attentiveness of the relevant public, the visual and phonetic differences between the marks were such that the highly specialised consumer could distinguish between them and that this would overcome any risk of confusion, even based on imperfect recollection. The General Court rejected these arguments on the basis that the overall impression created by the marks on the relevant public was that of two marks which are highly similar from both a visual and a phonetic perspective, while the conceptual comparison remained neutral. In spite of the highly specialised nature of the relevant medical specialist public and their high level of attention to detail, the court found that there remained a risk that a significant number of them would have an imperfect recollection of the earlier mark and, in all of the circumstances, would perceive the later mark as an earlier and updated version of the earlier mark. Consequently, the General Court upheld the Board of Appeal’s finding of likelihood of confusion.
This article first appeared on WTR Daily, part of World Trademark Review, in December, 2018. For further information, please go to www.worldtrademarkreview.com
