In one of its recent judgments, the Austrian Supreme Court had to
decide on the likelihood of confusion between the word mark Sinupret
registered (among other things) 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" and "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 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 a likelihood of confusion in one group of the relevant
public is sufficient. As in the 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 to avoid likelihood of confusion.
The Supreme Court also referred to an opposing decision of the Swiss
Trade Mark Office which it 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.
SONN & PARTNER Patentanwälte
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05