The General Court has annulled the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) in the case involving the EUIPO and Verla-Pharm Arzneimittel GmbH & Co. KG regarding the trademark dispute over PHERLA (Case T-357/23). The court issued its decision on April 24, 2024.
The case began in 2020 when Ms. Valeria Converso applied to register the EU Trade Mark PHERLA for goods in Classes 3, 5, and 10. Verla-Pharm opposed this application for the goods in Class 5. The Opposition Division and the Board of Appeal both rejected Verla-Pharm’s opposition, stating there was no likelihood of confusion between the marks. Verla-Pharm then appealed to the General Court.
The General Court found that the marks PHERLA and VERLA share four identical letters in the same sequence (E, R, L, and A), creating significant visual similarity despite different initial letters (V vs. PH). The Board of Appeal had noted that V and PH are visually different, but the court emphasized that this difference did not outweigh the overall visual similarity due to the shared ERLA sequence.
The Board of Appeal argued that even if the earlier mark had a high degree of reputation for specific goods or services, it did not necessarily imply a link between the marks. They highlighted that the goods in question were different, targeted different audiences (with some overlap), and operated in different markets, precluding any possibility of association between the marks. Thus, the signs were deemed visually similar to an average degree, contradicting the Board of Appeal’s conclusion of only low similarity.
The court noted it could not change the Board of Appeal’s decision without a concrete assessment of whether all the goods in question were identical. Consequently, the court rejected the claim for alteration and annulled the decision of the Second Board of Appeal, dismissing the action as to the remainder.
This decision underscores the need for trademark owners to adopt a meticulous and comprehensive approach when filing objections related to similar trademarks. The ruling reflects the importance of considering the overall visual impression of marks and the context in which goods are marketed.
The General Court’s decision highlights the critical need for a thorough evaluation of trademark similarities and market contexts in opposition proceedings.
Kerem Gokmen
Read on INTA.org: https://www.inta.org/perspectives/law-practice/european-union-euipo-decision-on-similarity-overturned-in-pherla-dispute/
