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Weak term ‘med’ included when assessing similarity of trademarks

The Federal Patent Court(1) recently held that the marks FEDAMED and SEBAMED were confusingly similar. When assessing the likelihood of confusion, the court held that the term ‘med’ was of weak distinctive character.

Facts

An opposition was filed against the word and figurative mark FEDAMED – which is registered with the Patent and Trademark Office for goods and services in Classes 3 and 5 – based on the earlier mark SEBAMED. The Trademark Division denied a likelihood of confusion, because the word beginnings ‘feda’ and ‘seba’ were clearly different from each other and were more distinctive than the descriptive sound ‘med’.

Decision

The court took a different view and affirmed the likelihood of confusion. It attributed an average degree of distinctiveness to the earlier mark SEBAMED. The elements ‘seba’ (indicating ‘tallow’) and ‘med’ (indicating ‘medical’) per se may be of weak distinctive character. However, the combination of these elements gave rise to a new overall term. The court affirmed aural confusion. There was a difference in the letters ‘F’ and ‘S’ in the more noticeable word beginnings. However, given the overall similarities, this difference was not suitable to create sufficient distance. The final syllable ‘med’ is commonly used as part of trademarks for goods in Classes 3 and 5 to indicate a medical connection. The distinctiveness that is generally recognisable to a layperson was therefore significantly limited. It may be unsuitable per se to establish significant similarity under trademark law. However, the term ‘med’ affected the overall impression of the opposing mark, which was perceived as a unit, and thereby increased existing similarity between the marks.

Comment

Notably, the court included descriptive terms such as ‘med’ when examining the likelihood of confusion. In this case, the court held that the common term ‘med’ would even increase the similarity between the marks. This is a view commonly known only at European level.

(1) October 2 2015 – 25 W (pat) 107/14 – FEDAMED.