“miababy” and “ia BABY interapothek”: Average phonetic similarity doesn’t offset low visual and conceptual similarity

The First Board of Appeal recently handed down an interesting decision concerning the opposition to the registration of a European Union word mark designating, among other things, pharmaceutical and baby products, grounded on Article 8(1)(b) of the EUMR. On this occasion, the Board of Appeal also ruled on the identification of the average consumer for products in class 5 and 35 and services in class 44.

 

Facts

On 4 July 2021, Q4 MEDIA filed an application for registration of the European Union trade mark (EUTM) "miababy" designating various goods and services in classes 5, 35 and 44, namely "pharmaceuticals”, “medical preparations”, “food supplements” and “dietetic substances for babies". This application was published on 26 July 2021.

On 25 October 2021, INTERAPOTHEK, S. A. U filed an opposition against the registration of the trade mark 'miababy'. Relying on Article 8(1)(b) EUMR, INTERAPOTHEK claimed that the registration would conflict with three of its earlier EUTMs, namely "ia BABY interapothek" designating, inter alia, classes 5, 30 and 32, "ia" designating goods in class 10 and "ia" designating services in class 35.

On 31 March 2023, the Opposition Division rejected the opposition for all the contested goods and services on the basis that no likelihood of confusion within the meaning of Article 8(1)(b) EUMR would subsist. On 19 July 2023, INTERAPOTHEK filed an appeal against the Opposition Division's decision.

Analysis

The First Division of the Board of Appeal divided its reasoning into several stages. It began by pointing out that it would examine the opposition based on the mark 'ia BABY interapothek', just as the Opposition Division had done.

Likelihood of confusion

The Board reiterated the need to prove the existence of a likelihood of confusion in the minds of the public in the territory in which the earlier mark is protected. The Board also set out the consistent principles derived from the case law concerning the global assessment of this likelihood of confusion, in particular that account should be taken of all the relevant factors of the case (i.e. C-251/95, SABEL, § 22; C-39/97, Canon, § 16). In line with the decision of the Opposition Division, the Board confirmed that, insofar as some of the conflicting goods are identical, likelihood of confusion would be assessed on the assumption that the goods and services are identical.

"BABY InternKat"

Identification of the relevant public

The Board sought to identify the relevant public for the goods or services designated by the contested registration, as well as its degree of attention, which are essential elements in assessing the likelihood of confusion.

The Board began by pointing out that the overall assessment of the likelihood of confusion should take account of the average consumer in the relevant category, who is reasonably well informed and reasonably observant and circumspect. The level of attention of the average consumer is however likely to vary depending on the category of goods or services in question, in accordance with well-established case law (T-256/04, Respicur, § 57; T-146/06, Aturion, § 58). To this end, the Chamber identified the relevant public for the products and services designated by "miababy".

Upholding the Opposition Division's decision on this point, the Board held that "pharmaceutical, medical products" in Class 5 are intended for a public consisting of both medical professionals and the general public, the latter also having a high level of attention, given that these products affect their state of health. Such view is in line with the preexisting case law (i.e., T-288/08, ZYDUS/ZIMBUS, § 36). The same reasoning can be applied to baby products, the relevant public being both parents and care-takers, both of whom therefore enjoy a high level of attention. As for the "pharmaceutical products for veterinary use" designated by the contested registration, the Board confirmed the increased level of attention of the general public. Extending the same reasoning, the Board confirmed that the services designated by class 35 (i.e. retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies), as well as the services included in class 44 (i.e. human healthcare services, homeopathic clinical services), were also covered by the contested registration [more on this point here].

Comparison of trade marks

The Board recalled that the overall assessment must be based on the overall impression produced by the marks notably considering the distinctive and dominant elements of the mark.

To this end, the Board analysed the composition of the "miababy" sign and the "ia BABY interapothek" sign. The "miababy" sign consists of a single verbal element written in tiny letters, each in a different colour. The element "baby" is to be understood as the English word for baby throughout the relevant territory. "mia" can be understood as a female first name, or mine in Italian and Spanish. Contradicting the position of the Opposition Division, the Board validly referred to the descriptive character of the element "baby", but only in relation to goods and services intended for infants.

As regards the earlier mark, the Board was able to find that it consisted of three verbal elements, in black and white, represented in bold type on three lines. The elements "ia" and "interapothek" are written in lower case, and the word "BABY" in upper case. The size of the letters is descending. The "ia" element is meaningless, but because of its size and position should be understood as the most dominant element. The word "interapothek" is made up of the German word for “between” and an element similar to the word “pharmacy” in German (apotheke). Because of the difference in spelling between the German word and the element of the earlier mark, the Board noted that “interapothek” would not be understood as a German word, nor would it have a meaning in other languages. As a result, the Board was able to logically deduce the normal distinctive character of this element.

Visual similarity

In comparing the two signs, rejecting the opponent's arguments, the Board found that there was little visual similarity. In this respect, although the sequence of letters "i a b a b y" is common to both marks, numerous differences can be identified, namely their initial letter, their ending, as well as the number of letters, words, their sizes, placement, font, whether capitals are used, and whether colours are used. This is all the truer because, as the Board rightly pointed out, the word 'baby' is descriptive.

Phonetics

On the phonetic level, the Board found that the phonetic similarity between the two conflicting signs was at most moderate, based on a detailed analysis of the two signs. Relying on well-established case law, the Board pointed out that the relevant public generally pays particular attention to the beginning of trade marks. In that regard, the "ia" element of the earlier mark may either be pronounced in a single word or letter by letter. In the first case, that pronunciation is similar to the contested mark, with the difference that the latter begins with an m, producing a different sound. Regarding the word "baby", the second word in the signs in dispute, the Board validly noted that there was no difference in pronunciation. The number of syllables and words also differ. Three syllables and one word for the contested mark versus eight syllables.

Conceptual similarity

The Board held that there was little conceptual similarity between the two signs. This position is not surprising because, as the Board noted, the only conceptual similarity results from the "baby" element. However, this element is descriptive, as it is used for most of the goods and services designated by the mark whose registration is being challenged. It therefore has little impact on the overall impression produced by the marks. This position is in line with T-602/19, Naturanove/Naturlium.

Assessment of the overall likelihood of confusion

Confirming the decision of the Opposition Division, the Board first pointed out that the distinctive character of the earlier mark is below average. Indeed, the distinctive character results from the distinctive element "IA" in a central and initial position, which is weakened by the descriptiveness of the second word "BABY". As for the central distinctive element "InterApotheke", the combination of "Inter" and "Apothek" cannot be considered to have any meaning.

Finally, the Board concluded that "given the high level of attention of the relevant public and the weakened distinctiveness of the earlier mark, the likelihood of confusion cannot be confirmed, even for identical goods". The Board also added that such a likelihood is even less likely to exist for goods that are merely similar. Regarding the other marks cited, the Board ruled out any likelihood of confusion because of their even less marked similarity to the mark for which the application is contested [recent case on likelihood of confusion here].