This September 13, 2010, was certainly the day when the General Court made the pharmaceutical trademarks practice feel better again by ruling that the marks SORVIR (contested CTM) and NORVIR (earlier CTM hold by Abbott Laboratories) were confusingly similar in respect of products of class 5.
This solution may look quite obvious in the end but the comparison between the signs actually brought to unexpected outcomes at the earlier stages of the proceeding: the Opposition Division and the Board of Appeal concurred in finding that SORVIR and NORVIR were not sufficiently similar to give rise to a likelihood of confusion.
In particular, the difference in each initial letter of the two signs had been regarded as having such an impact of the overall impression that it outweighed the common segment ‘ORVIR’ (!)
The General Court hopefully took the view that the difference of the first letter between the signs at issue, a similarity still existed between them as their visual impression and pronunciation both consisted in the major part “ORVIR”. Quite interestingly, the Court also pointed out that the allusion / possible descriptiveness to the goods of the element “VIR” (SORVIR covering ‘anti-viral pharmaceuticals’ and NORVIR being for an anti-infective) could only have an effect only on the assessment of the conceptual similarity
This decision shows to which amazing situations may conduct extreme and blindly applied principles of the Community practice. It also illustrates, once again, how the fighting spirit is of importance since, after all, it was necessary to wait for the General Court to rule the case to have a positive decision for Abbott.