Dispute over the similarity of the marks “NIMORAL” and “NEORAL” – ruling of the EU General Court

In a ruling on 6 April 2017, in case No. T-49/16, the EU General Court upheld a decision by the EUIPO Fourth Board of Appeal dismissing a complaint by the company Azanta A/S (Azanta) against a decision to refuse to register the word trademark “NIMORAL.”

Azanta submitted that mark on 23 October 2013, applying for protection in respect of goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations improving the effectiveness of radiotherapy in treating cancer patients.” On 2 December 2013, an objection against that registration was raised by the company Novartis AG based on the previous registration of the EU trademark “NEORAL” for goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations.”

In a decision on 29 January 2015, the EUIPO Objections Department found in favor of the objection. Thereafter, the EUIPO Fourth Board of Appeal considered an appeal by Azanta, but upheld the decision and refused to register the contested mark. In its justification, the Board of Appeal pointed to the identity of the goods the disputed marks identify and to the high degree of similarity between the marks themselves, which, when taken together, cause a likelihood of consumers being misled as to the origin of products bearing the disputed marks.

Azanta then submitted a complaint to the EU General Court, in which it questioned the similarity of the marks. In particular, it argued that the marks are not similar to each other phonetically and semantically (conceptually), while visually they are only slightly similar. In developing its claims, Azanta stated that the mark “NIMORAL” consists of seven letters, while the mark “NEORAL” contains only six.

Further, in the opinion of the plaintiff, the letter “m” plays a key role in the structure of the mark submitted, being “wide and distinct”, thereby drawing the attention of consumers and affecting the distinctiveness of the mark. Phonetically, the plaintiff argued that the word “NIMORAL” is pronounced in the French language completely differently than the word “NEORAL.” The former is pronounced as three syllables, the latter as only two. In respect of the semantic (conceptual) realm, Azanta argued that the element “neo” in the mark “NEORAL” has a definite meaning, referring to “newness”.

In the plaintiff’s view, all of those arguments lead to the conclusion that the disputed marks are not sufficiently similar to each other as to create a risk of consumers being misled as to the origin of products bearing them. The EU General Court did not accept the plaintiff’s arguments and upheld the refusal to register the mark “NIMORAL.” In its justification, it showed that both marks consist solely of a single word.

Further, the grammatical and linguistic structure of both marks is similar, and both marks contain the same word element “oral,” in each case at the end of the word. In the court’s view, the small differences between the marks are not sufficient to negate their considerable visual similarity. The court also pointed to the strong phonetic similarity between the marks, not sharing the view of the plaintiff that they will be read in a completely different way.

Comparing the two marks conceptually (semantically), the court noted that, even if one accepts that the element “neo” in the mark “NEORAL” essentially refers to the concept of novelty, this in no way reduced the degree of similarity between the marks—each constitutes a fanciful name that, considered as a whole, has no meaningful content at all.

Consequently, given that the goods to bear the two marks are identical, and that the marks are similar visually and phonetically, the EU General Court did not identify any errors in the decision of the EUIPO Fourth Board of Appeal and refused to register the mark “NIMORAL” due to its collision with the previous mark “NEORAL.”

Source: www.curia.europa.eu

By Piotr Wenski

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