Although Community trade marks cover all EU member states
and the relevant public consists in the present case of
professionals and average European consumers, Spanish ladies
were the deciding factor in the OHIM opposition case at issue
between a Canadian trade mark applicant and a German
Por que? Because it is supposed to be common knowledge that
the average Spanish public is not familiar with the English
language. It follows that if, on the part of the relevant
Spanish-speaking public, there existed a likelihood of
confusion between the marks at issue, the assessment of such a
likelihood of confusion could, for reasons of procedural
economy, be restricted to that particular part of the relevant
In 2010 CTM registration was sought for the word sign
Femivia for goods in class 5 ("preparations for the prevention
and treatment of medical conditions related to the menopause").
Against this application an opposition was filed, which was
based on the Community word mark for Femibion, among
At first instance the Opposition Division rejected the
opposition in its entirety. The similarity of the signs Femivia
and Femibion is primarily based on the prefix "femi", which has
a weak distinctive character for the goods at issue.
An appeal was filed and the Fourth Board of Appeal of OHIM
upheld the appeal, annulled the decision of the Opposition
Division and rejected the CTM application. According to the
Fourth Board of Appeal, there was a likelihood of confusion
between the marks on the part of the relevant Spanish-speaking
public because of the identity of the goods, the average visual
similarity and high degree of phonetic similarity of the signs
(in Spanish the letter 'v' is pronounced like a 'b'). Regarding
the prefix "fem" it was found not to be descriptive for the
goods in question.
The applicant disputes the findings of the Board of Appeal.
According to the applicant the prefix 'femi' is descriptive for
goods in class 5. Therefore the comparison of the signs ought
to be made on the basis of the distinctive and dominant
components, namely "bion" and "via".
The Board of Appeal considers otherwise and founds that the
prefix "fem" would not be perceived as being descriptive for
the goods covered by the mark applied for, even though these
goods are intended for the prevention and treatment of medical
conditions related to the menopause, by which only women are
affected. In this respect it is even regarded that the Spanish
word "femenino" means "feminine".
Nevertheless, it was found by the Board of Appeal that the
inherent distinctive character of the mark Femibion was normal
with regard to goods in class 5. Thus, for the Spanish-speaking
public the signs at issue have an average degree of visual
similarity, a high degree of phonetic similarity and a certain
degree of conceptual similarity. Therefore the Appeal was
upheld and the CTM application Femivia was rejected.
Why OHIM has a partiality to the Spanish public, we can only
guess. What we do know, however, is that the influence of the
Spanish public, or EU public which is not familiar with the
English language, must not be underestimated in OHIM opposition
cases. This case also shows that what a Spanish girl wants is
obviously of importance.
Nevertheless, it should be kept in mind that what seems to
be descriptive or at least less distinctive for one part of the
EU public, could be seen as a mark with a normal scope of
protection by another part of the public.
Johan de Wittlaan 7
2517 JR The Hague
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99