On 9 October 2012, the General Court of the European Union (the "General Court") annulled a decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (the "OHIM").

On 6 April 2011, the OHIM had rejected the opposition of the Portuguese company Bial-Portela & Ca to the registration of a Community trade mark. Bial-Portela & Ca had claimed that the registration by the Spanish company Isdin of the word sign ZEBEXIR would likely lead to confusion with its own, earlier, Community Trade mark, ZEBINIX. Both marks concerned class 3 and class 5 products, which include cleaning, laundry, perfumery and hygiene products, as well as pharmaceutical, medical and veterinary preparations and baby food (while the ZEBINIX trade mark also covers class 42 products).

The General Court started its analysis by recalling that the likelihood of confusion is defined as the risk that the public might believe that the goods or services come from the same undertaking or from economically-linked undertakings. This must be assessed globally, i.e. taking into account the overall impression given by the visual, phonetic or conceptual similarity of the signs at issue. This "overall impression" is central to the analysis, as the general public, to which most class 3 and 5 products are directed, is generally less observant than professionals and normally perceives a mark as a whole.

On this basis, the General Court proceeded to examine the visual and phonetic similarity of the two word signs. The General Court considered that an "impression of similarity" was created by the first common part of the words and reinforced by the common presence of an "i" and by the visually striking "x" letter. Contrary to what the OHIM had decided, the visual differences in the central and end parts of the words did not suffice to cancel out this impression. In addition, the Court noted that the OHIM erred in finding no phonetic similarity between the signs as both words are composed of three syllables, with the first syllable being identical and the last two containing the common letters "i" and "x" and very similar phonetic impressions ("iks" and "eks"). The question of which syllables the consumer will stress when pronouncing the signs was deemed irrelevant as this would likely vary depending on the language.

The General Court thus found that, contrary to what the OHIM had decided, there is an average degree of global similarity between the marks. The Court considered that a global assessment of the likelihood of confusion implied taking into account the fact that these marks cover identical goods and that these products are normally marketed on display in supermarkets and chosen by the consumers after a visual examination of their packaging. This last factor made the visual similarity especially important. The General Court therefore concluded that there was a likelihood of confusion between the mark applied for and the earlier mark and accordingly annulled the OHIM's decision.

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