The case: The Polish company Olimp Laboratories sp. z o.o. had come up with a so-called allusive mark for its eye drops. The mark contained modified factual references to the products. The following figurative sign was applied for as an EU trademark:

However, the German OmniVision GmbH filed an opposition, relying on its earlier EU word mark protected for eye drops:

Was the opposition justified? In particular, were the two signs so similar that there was a likelihood of confusion? Assessing trademark similarity is one of the most difficult aspects of trademark law. An incorrect assessment often leads to wrong decisions and, subsequently, serious consequences. Reason enough to take a closer look at it.

Brand similarity

Assessing the similarity of two marks involves more than simply taking one component of a mark and comparing it with another mark. Rather, the marks must be considered as a whole. It must be determined what impression the marks leave in the mind of the target public. This impression, of each product, is what must then be compared.

Distinctiveness of the individual elements

For this examination, each individual element must first be examined as to the extent to which it is possible to identify and distinguish the registered goods as originating from a particular undertaking. A member of the public orients towards certain distinctive elements of a trademark and retains them in their memory. If a feature merely describes the goods, it will not be – or will be only very slightly – distinctive and the public will generally not look to it to distinguish the products. However, this may be different if the descriptive element attracts attention because of its position and size and is remembered by way of the trademark itself.

In the present case, the marks have a descriptive element in common:

Vision

‘Vision’ describes the field of application of the eye drops and is therefore inherently limited in terms of indicating the origin of the eye drops and the extent to which it will remain in the mind of the public.

The earlier mark, in addition, contains at the beginning the element

Hylo

It may be that this component alludes to the active ingredient sodium hyaluronate and is derived from it. However, this is not immediately comprehensible to a significant part of the public. ‘Hylo’ therefore has no meaning for them and is therefore in theory suitable for distinguishing the eye drops.

The sign ‘Hydrovision’, on the other hand, has the prefix

Hydro

This is readily comprehensible as a reference to water and is therefore capable of describing the properties of the eye drops as having the ability to lubricate or hydrate the eyes. Because of its descriptive content, this element has only a low degree of distinctiveness.

The stylistic elements of the mark applied for

serve primarily only decorative purposes. The figurative element, namely an eye as a dark-blue drop of water, only indicates that the goods are hydrating eye drops. The graphic elements are therefore not distinctive.

Graphically, the hyphen in

 

only has the function of dividing up the individual words. It does not individualise the mark. Nor is the division into two separate words suitable for individualising the sign. The stylistic elements have no distinctive character in this respect.

Overall impression

Once the distinctiveness of the individual elements of the sign has been established, the relationship between these elements must be further assessed. Remember: what matters is the sign as a whole. What must be determined is the aspects the public remembers about the sign as a means of distinction.

The elements ‘Hylo’ and ‘Hydro’ are shorter than the element ‘Vision’. They are not so original or imaginative that only they could attract the audience’s attention. Thus, although they form the beginning of the signs, the public does not remember these elements from the marks alone. The public distinguishes the eye drops in the market only on the basis of the respective signs as a whole.

Comparison of the respective overall impression

Are these brands similar in their entirety?

Visually, there is a broad correspondence of letters in the same order:

Hy dr o vision

Hy l o – Vision

The graphic elements of the signs cannot cancel out this pictorial similarity:

Thus, the design of the ‘O’ in the mark applied for

has recognizably only a letter function and is also not particularly striking graphically. The hyphen in the earlier mark, with its division into two words, would not be particularly noticed by the public and does not change the visual similarity.

The word elements are also phonetically similar in their entirety. A conceptual similarity cannot be established.

As a result, there is a visual and a phonetic similarity between the signs.

Risk of confusion

In terms of the likelihood of confusion, it is further noteworthy that Hylo-Vision is not a weak sign. The mark is recognisably an allusive mark. Such marks are common in the pharmaceutical sector. Due to their vagueness, they cannot be equated with a directly descriptive content and are therefore regularly and averagely distinctive with a normal scope of protection.

In view of the identical goods, the phonetic and visual similarity, and the average distinctiveness of the earlier mark, there was a likelihood of confusion. The figurative sign ‘Hydrovision’ was not registered as a trademark.

General Court of the European Union, 27 January 2021, T-810/19

Learnings: If you decide to use an allusive mark to increase the communicative power of the mark, you should pay particular attention to any similarity potentially shared with prior signs. What is important is which elements the public remembers from your mark. Even elements that are merely descriptive of your goods can be used by the public to identify your mark if they stand out because of their position and size. Mistakes in this respect can lead to costly infringements of earlier signs.