Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

01 novembre 2009

‘Ribonucleid acid’: a difficult expression and a difficult case

Stefano Sandri

RNA’ stands clearly for ‘Ribonucleid acid’, at least for the chemic-pharmaceutical people. However, what about the end-consumers? Do they are reasonably well informed, observant and circumspect as to understand the significant of the mentioned acronym? I don’t think so. This is one of the many questions, doubts and incertitude lately raised by the CFI, T- T‑80/08, 28 October 2009, CureVac GmbH v. Qiagen GmbH, where the problem faced was to decide whether the trade marks RNAiF and RNActive were confusingly similar, or not, in relation to more or less identical/similar products.

Chemical and pharmaceuticals marks came once again at the attention of the court and they risk to be converted in a crucial and puzzling legal problem. This judgement does not go out of a sort of contradiction and dangerous omission.

Chemicals – say the decision - are aimed at a specialised public (in particular, chemists and laboratory personnel). Also end consumers, nevertheless, have a high level of attention in this case, and are assisted in their choice by highly qualified professionals (paragraph 29). Fine, that means that both the public should recognize the mere descriptive meaning of the first part of the two marks.

It follows that, according to the court, the attention must focused on the second one, ‘ifect’ respectively, and ‘ctive’. Are these terms
, although seen in the perspective of a global assessment – which belongs to the accuracy of the decisional iter - and impression - which has to do with the perception of the consumers – are dissimilar (notwithstanding the identity/quasi identity of the products, the primacy of the first part of the marks, the identical graphic predominance of RNA) ?

The analysis of the CFI seems to make abstraction of the relevant and pertinent circumstances in this case represented by the assessment as to how the products reach the market. Accordingly it seems to me quite marginal and not realistic to overestimate the criteria of the phonetic and visual effect (paragraph 38 to 42), since the nature of the products in question remits in first instance to the semantic value of the two signs in their global meaning.

The public, at which the products aim, are educated people who will consider the meaning of ‘ifect’ and ‘ctive’ equivalent ( because ‘ the two terms refer to the notion of effectiveness or the word ‘effective’
, as pointed out by the appellant), a presumption which is not contradicted by the sophisticated distinction in the German language, paragraph 44). Finally, the assumption that the notion of effectiveness or the word ‘effective’ ‘requires the consumer in question to deconstruct the sign too much in order to make an association between the two signs at issue, and thus seems too improbable to be accepted’ (same paragraph 44; pls note that the argument is the mere one presented by the court) is clearly wrong in the light of the communication rules to the extent they are applicable to the trade mark, intended and acknowledged as a communication tool.

It is indeed well known scientifically that in any language transmission the sign must firstly be decoded (deconstruct), and subsequently coded, pursuant a psychologic process governed by perception system where the receptor of the sign does not exercise any (rational) effort
(for a full demonstration see my work . ‘Percepire il marchio’ , 2006).

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