Matthias Werner applied to register as an EU trade mark
(EUTM) a composite sign (above left) consisting of
a brightly coloured figurative element suspended over the word
elements "dynamic" and "life" for "dietary
supplements for humans and animals; tobacco-free cigarettes for
medical purposes; vitamin preparations; medicinal drinks (class 5)
and "fruit beverages and fruit juices; fruit juice
concentrates (non-alcoholic drinks); beer" (class 32). A
Spanish company, Laboratorios Ern, SA, filed a notice of opposition
based on a likelihood of confusion between the
EUTM and the Spanish company's earlier Spanish
word mark DYNAMIN, registered for "chemical
products and specifics" (class 1) and "dietetic foods
adapted for medical use in any shape or form" (class 5).
Both the Opposition Division and, subsequently, the
EUIPO's Fourth Board of Appeal, rejected the
opposition. The Board of Appeal found that only "medicinal
drinks" covered by the EUTM and
"dietetic foods adapted for medical use in any shape or
form" covered by the Spanish mark were identical, with other
goods covered being, at most, highly similar, and others not
similar at all. Further, the Board considered the signs at issue to
have a low degree of visual and phonetic similarity and no
conceptual similarity. Given that the relevant public for certain
of the goods, being consumers in Spain of goods for medical use,
would have had a heightened level of attention and in light of the
normal distinctive character of the Spanish mark, there was no
likelihood of confusion.
On appeal, the EU General Court rejected the Spanish trade mark
owner's argument that the goods were all identical, highly
similar or at least closely related. In particular, the assertion
that "tobacco-free cigarettes for medical purposes" were
a dietetic foodstuff was ineffective as these goods were not in
competition with each other and could not be used to prevent or
treat the same conditions. Finally, while the goods might both have
health benefits, they could not be considered complementary as the
use of one was "neither indispensable [n]or decisive" for
use of the other.
In a comparison of the signs at issue, the proprietor of the
Spanish mark asserted that the word element of the
EUTM, "dynamic", was the dominant
feature of this mark. The General Court disagreed, however, finding
instead that neither the brightly coloured figurative elements of
the mark, nor the second word element, "life", were
dominated by this first word element. Therefore the
EUTM was considered as a whole when compared to
the Spanish mark. The General Court agreed with the Board of Appeal
that the signs had a low degree of visual similarity, particularly
given the "striking figurative element" of the
EUTM. In terms of phonetic similarities, the
"n" at the end of DYNAMIN produced a
very different sound to the "c" at the end of
"dynamic". As this difference in pronunciation was
accentuated by the pronunciation of the second word element in the
EUTM, the signs at issue could only be considered
to have a low degree of phonetic similarity.
Finally, as the Spanish mark was held to be "without
meaning for the relevant public", the Board of Appeal had been
correct to find that there was no conceptual similarity between the
Both the Opposition Division and the Board of Appeal had been
correct in concluding that there was no likelihood of confusion
between the signs at issue. It therefore followed that the General
Court rejected the appeal in its entirety and the opposition was
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