Fidia Farmaceutici S.p.A v. Vorwarts Pharma Sp. z o.o

The goods at issue in Class 5 (pharmaceuticals, medical preparations, medical substances and further goods for medical use) are partly identical and partly similar. They target both professionals and the public at large with a high level of attention. The relevant territory is Italy. The signs are visually, aurally and conceptually similar to a low degree. The earlier mark as a whole enjoys a low degree of inherent distinctiveness. The weakness of the common element ‘HYAL’ (referring to the substances ‘hyaluronidase’ and ‘hyalosidase’, which are registered as INNs), the high level of attention for the goods in Class 5, in combination with the differing endings of the signs, play a significant differentiating role in the present case. There is no likelihood of confusion even with respect to the family of ‘HYAL’-formative marks. The common family denominator ‘HYAL’ remains weakly distinctive, so that it cannot per se give rise to any confusion. As the present opposition was also based on twelve more earlier rights and considering the parties’ legitimate interest that the case be examined by both instances of the Office, the Board remits the case to the Opposition Division in order to further examine the opposition on the basis of the abovementioned earlier rights. Confidentiality request and additional evidence accepted.