Aventis Pharma S.A. v Mundipharma AG

This matter concerned an opposition by Mundipharma AG to the registration of a trade mark by Aventis Pharma S.A. The dispute arose from Aventis's application to register the trade mark RELTEC. Mundipharma opposed this application, relying on its registered trade mark RILUTEK, which had an earlier priority date and covered the same goods in class 5. The proceedings were heard by Bianca Irgang, a Hearing Officer for Trade Marks.

The primary legal issue before the Hearing Officer was whether the applicant's trade mark RELTEC was substantially identical with, or deceptively similar to, Mundipharma's registered trade mark RILUTEK, pursuant to section 44 of the relevant Act. To succeed in its opposition under section 44, Mundipharma was required to demonstrate the existence of a registered trade mark with an earlier priority date, covering similar goods or closely related services, and that the applicant's mark was substantially identical or deceptively similar to it.

The Hearing Officer reasoned that while both trade marks were coined words and commenced with the letter 'R', they were not substantially identical. Applying the "side-by-side" test, the Hearing Officer noted that RELTEC comprised six letters and RILUTEK comprised seven, and their spellings were distinct. These differences were considered sufficient to distinguish the marks from each other. As Mundipharma had not established the ground of opposition under section 44, and had not provided evidence to support its other grounds of opposition, the Hearing Officer decided to refuse the opposition. Consequently, the trade mark application was permitted to proceed to registration, subject to any appeal. Costs were awarded against Mundipharma.