Keywords
Summary

Keywords

Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

Summary

For the average consumer in Spain, France, Italy, Austria, Portugal and the Benelux Countries there is no likelihood of confusion between the word sign ECHINAID, registration of which as a Community trade mark is requested in respect of ‘vitamins, food supplements, herbal preparations, pharmaceutical and medical preparations’ in Class 5 of the Nice Agreement, and the word mark ECHINACIN which was registered earlier as an international mark effective in Spain, France, Italy, Austria, Portugal and the Benelux Countries for ‘chemical pharmaceuticals’ in that same class, in so far as, first, the prefix ‘echin-’ or ‘echina-’ refers, as far as the average consumer is concerned, to the composition of the product rather than to its commercial origin, since the word ‘Echinacea’ is the scientific name in Latin of a plant used for pharmaceutical products and herbal medicine, and, second, the respective suffixes of the signs in conflict, namely ‘-id’ and ‘-cin’, are to be regarded as the distinctive and dominant elements which attract the attention of consumers.

In that regard, the global assessment of the likelihood of confusion must be carried out objectively and cannot be influenced by considerations that are unrelated to the commercial origin of the goods in question such as any harmful consequences linked to the incorrect use of a pharmaceutical product. Those possible consequences result from possible confusion on the part of the consumer as regards the identity or characteristics of the goods at issue and not as regards their commercial origin in the sense of the ground for refusal laid down in Article 8(1)(b) of Regulation No 40/94. In addition, as regards pharmaceutical products, consumers are assisted in their choice by highly qualified professionals, whereas, in relation to herbal medicinal products, consumers are deemed to be reasonably well informed, observant and circumspect, and used to using products whose name contains the prefix ‘echina-’, in such a way that any risk of a mistaken choice and subsequent incorrect use of a product giving rise to certain harmful consequences is compensated for by the high degree of awareness on the part of, and attention paid by, the average consumers concerned.

(see paras 31-33, 45, 55)