EU court sides with Merck in Endoceutics trademark appeal

The EU General Court dismissed Canada-based Endoceutics’ trademark appeal in a win for medical technology company Merck KGaA on Thursday, November 22.

Endoceutics, which operates in the fields of women’s health and hormone-sensitive cancer prevention and treatment, filed to register the word ‘Femivia’ as a trademark in 2014.

The application, filed at the European Union Intellectual Property Office (EUIPO), sought to cover a range of pharmaceutical processes related to cancer, and other diseases, in class 5.

Germany-based Merck filed a notice of opposition based on its own earlier-registered word mark, ‘Femibion Intima’ (9,349,051). The mark, registered in 2011, also covers pharmaceutical preparations in class 5.

In 2016, the EUIPO’s Opposition Division upheld the opposition, and the Second Board of Appeal dismissed Endoceutics’ appeal the following year.

The board said that there was a likelihood of confusion on the part of the Spanish-speaking section of the relevant public, as the marks were similar and covered identical goods.

It added that the prefix ‘fem’, in both marks, would be understood as an abbreviation of the Spanish word ‘femenino’, which describes the purpose of the goods covered by the marks.

Endoceutics appealed against the decision, arguing that there is no likelihood of confusion and that the board did not carry out a global assessment of the signs at issue.

The series of letters in the start of the marks, ‘femi’, has a weak distinctive character and is not sufficient to conclude that the marks are similar, the Canada-based company argued.

Endoceutics added that the word ‘Intima’ in the earlier-registered mark would attract the attention of the relevant public.

Finally, Endoceutics claimed that the board failed to consider the high level of attention of the relevant public. The board had found the relevant public to include both the average consumer and professionals in the medical and pharmaceutical sectors with a higher level of attention.

Last week, the General Court affirmed the board’s finding that the word ‘Intima’ in the earlier-registered mark would be understood by Spanish-speaking public to mean intimate, close, or personal, suggesting that the goods in question are for personal use.

The court said that the word ‘Intima’ should not be disregarded in the assessment of the marks, but that consumers will likely focus on the distinctive ‘Femibion’ aspect of the mark.

“It should be borne in mind that a finding that the earlier mark has a weak distinctive character does not preclude a finding that there is a likelihood of confusion,” the court added.

Assessing the marks, the court said that the Spanish-speaking public would perceive the marks to be phonetically similar to an average degree, and conceptually and visually similar to a low degree.

But the court affirmed the board’s finding of a likelihood of confusion on the part of the Spanish-speaking public, despite the relevant public having a high level of attention. It also confirmed that the board did take the high level of attention of the relevant public into account.

In a win for Merck, the court dismissed the appeal and ordered Endoceutics to pay the costs of the action.

The EU General Court also handed a victory to Merck last week, rejecting a Swiss company’s appeal against an EUIPO decision that had gone in Merck’s favour.


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