June 2012

In one of its recent judgments, the Austrian Supreme Court had to decide on the likelihood of confusion between the word mark "Sinupret" registered i.a. for pharmaceutical products and the sign "Sinuvex" used for pharmaceutical products.

The court of first instance and the appeal court both found that "sinu" is of little distinctive character as "sinus" is used in the technical terminology of doctors and describes the paranasal sinuses. Accordingly the lower courts found that the descriptive part of the trade mark is of no or very little distinctive character and the second parts of the conflicting signs "pret" versus "vex" were sufficiently dissimilar to exclude any likelihood of confusion even when the signs where used for identical goods. However, The Supreme Court disagreed.

In its reasoning the Supreme Court found that "sinu" does not lack any a distinctive character as the relevant public for the pharmaceutical products in question were not only doctors and pharmacists, but also ordinary consumers who would not understand the meaning of "sinus". Accordingly the Supreme Court argued that there was a split understanding in the relevant public. With reference to the findings of the CJEU in C-412/05 (Alcon) the Supreme Court found that it is sufficient if there was a likelihood of confusion regarding one group of the relevant public. As in view of the Supreme Court the group of ordinary end consumers would not understand the meaning of "sinu" the differences between the second parts of the opposing signs were not sufficient for avoiding likelihood of confusion.

The Supreme Court also referred to an opposing decision of the Swiss Trade Mark Office which the Supreme found not convincing as the Swiss Trade Mark Office had started from the perception that "sinu" would be describing what was explicitly denied by the Austrian Supreme Court. Additionally, the Supreme Court referred to several decisions of OHIM which in view of the Austrian Supreme Court supported its reasoning.

Although the findings of the Supreme Court in the individual case may seem questionable, its reference to decisions of OHIM (and not only to those of the CFI and the CJEU) and regarding these decisions as having high indicative effect seems to be an interesting development.

Dr Rainer Beetz, LL.M.