Case T-80/08

CureVac GmbH

v

Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for the Community word mark RNAiFect — Earlier Community word mark RNActive — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)’

Judgment of the Court of First Instance (Eighth Chamber), 28 October 2009 II ‐ 4028

Summary of the Judgment

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

There is no likelihood of confusion for the relevant consumers between the word sign RNAiFect for which registration as a Community trade mark is sought for ‘Chemicals used in industry and science; chemicals used in industry and science for treating biopolymers; active biological substances for laboratories for use in science and research, namely buffers and reagents, namely for the introduction of molecules and molecule aggregates, namely peptides and/or nucleic acids, into cells, namely prokaryotic or eukaryotic cells; chromatographic materials for use in the separation, cleaning, and isolation of biopolymers and reagents and solutions for conducting the chromatographic separation, cleaning and/or isolation of biopolymers; kits for introducing molecules and molecule aggregates, namely peptides and/or nucleic acids into cells, namely prokaryotic or eukaryotic cells; transfection reagents’ and ‘pharmaceutical, veterinary and sanitary preparations’ in Classes 1 and 5, respectively, under the Nice Agreement and the word mark RNActive registered earlier as a Community trade mark for goods in the same classes which are partly identical and partly very similar.

The two signs are indeed constructed around the common component ‘rna’. However, it must be held that that component has at the very most limited distinctive character, even if a section of the consumers do not know exactly the meaning of the abbreviation in question, but assume that there is an indirect reference, in particular to a chemical or molecular compound.

In addition, whilst it is true that the consumer normally attaches more importance to the first part of words where it is more pronounced, it remains the case that the public will not generally consider a descriptive or weakly distinctive element forming part of a complex mark to be the distinctive and dominant element of the overall impression conveyed by that mark.

Since the common component of the two signs at issue, namely ‘rna’, has at the most limited distinctive character, it does not enable the commercial origin of the goods to be distinguished. It is therefore the endings of the signs at issue, namely ‘ctive’ and ‘ifect’, which must be regarded as the distinctive and dominant elements which attract the attention of consumers, as they are more distinctive than the initial component ‘rna’.

Thus, although the common component of the two signs, namely ‘rna’, appears first, the fact that it is identical does not lead to a likelihood of confusion because that component has limited distinctive character, so that the public’s attention will be drawn to the endings of the two signs which are, in the context of an overall assessment, visually, phonetically and conceptually distinct. The two signs thus give different impressions.

It follows that the degree of identity or very great similarity of the goods covered is offset by the weak degree of similarity of the signs and the weak distinctive, even descriptive, character of the abbreviation ‘RNA’, with the result that any likelihood of confusion on the part of the relevant public can be ruled out.

(see paras 47-50, 52, 53)