EUIPO upholds opposition against the PHŌNX trademark application, finding a likelihood of confusion with the earlier PHOENIX Pharma mark.
IP Consulting successfully represented the Bulgarian company Фьоникс Фарма ЕООД (PHOENIX Pharma) in opposition proceedings before the European Union Intellectual Property Office (EUIPO).
On October 30, 2026, the EUIPO Opposition Division upheld the opposition in full. As a result, it rejected European Union trademark application No. 19 213 731 for PHŌNX for all contested goods.
The decision highlights the importance of protecting the distinctive elements of established trademarks. Even when signs differ in spelling, pronunciation, or appearance, a likelihood of confusion may still exist.
Background: PHOENIX Pharma vs. PHŌNX
The dispute concerned an application to register the word mark PHŌNX as a European Union trademark.
The applicant, Henrike Doldi of Germany, sought protection for goods in two classes:
- Class 3: Toiletries and oral hygiene preparations.
- Class 21: Dental cleaning articles.
On October 20, 2025, PHOENIX Pharma, represented by IP Consulting, filed an opposition against the application.
The opposition relied on earlier trademark rights, including Bulgarian trademark registration No. 176 245.
This figurative mark contains the prominent verbal element PHOENIX, together with the word Pharma and the slogan We deliver health.
The opposition was based on Article 8(1)(b) of the European Union Trade Mark Regulation (EUTMR). Under this provision, a trademark application may be refused if there is a likelihood of confusion with an earlier mark.
EUIPO Finds the Goods Identical or Similar
First, the Opposition Division examined the relationship between the goods covered by the two trademarks.
It found that the contested toiletries and oral hygiene preparations in Class 3 were identical to goods covered by the earlier registration.
Furthermore, the dental cleaning articles in Class 21 were considered similar to toothpaste in Class 3.
This similarity resulted from several factors. The goods complement each other and share distribution channels, consumers, and producers.
These findings provided an important basis for assessing the likelihood of confusion between the trademarks.
PHOENIX and PHŌNX: Why the Differences Were Not Enough
A key question was whether the differences between PHOENIX and PHŌNX were sufficient to distinguish the signs.
To answer this question, the Opposition Division examined their visual, phonetic, and conceptual similarities from the perspective of Bulgarian consumers.
Visual Similarity
EUIPO identified PHOENIX as the dominant element of the earlier figurative trademark.
Although the earlier mark also contains additional wording and a circular graphic element, these features play a secondary role in its overall impression.
The two signs share five letters: P, H, O, N, and X. They also have the same consonantal structure: P-H-N-X.
PHOENIX contains additional letters, while PHŌNX features a macron above the letter O. However, these differences do not eliminate the resemblance.
Therefore, EUIPO found the signs visually similar to an average degree.
Phonetic Similarity
The Opposition Division also identified significant similarities in pronunciation.
Depending on how Bulgarian consumers pronounce PHŌNX, the sign may sound similar to PHOENIX. It may also evoke the Bulgarian word феникс (phoenix).
Consequently, EUIPO concluded that the signs were phonetically similar to at least an average degree.
Conceptual Similarity
Neither sign directly corresponds to a Bulgarian word.
However, some Bulgarian consumers may associate both PHOENIX and PHŌNX with the concept of the phoenix.
For these consumers, the signs are conceptually similar to an average degree.
By contrast, other consumers may perceive both signs as invented terms without a recognizable meaning. For them, the conceptual comparison remains neutral.
Likelihood of Confusion: The Decisive Factor
After examining the relevant factors, the Opposition Division concluded that the similarities between the marks could cause confusion among consumers.
In particular, consumers might believe that the goods come from the same company or from economically connected businesses.
The decision also emphasized an important aspect of consumer behavior. Consumers rarely compare trademarks directly. Instead, they rely on their imperfect memory of signs they have previously encountered.
In this case, the shared consonantal structure and similarities in pronunciation were particularly relevant.
As a result, consumers could perceive PHŌNX as a variation or sub-brand of PHOENIX Pharma.
EUIPO therefore found a likelihood of confusion, including a likelihood of association, under Article 8(1)(b) EUTMR.
A Successful Outcome for IP Consulting’s Client
The EUIPO Opposition Division ruled in favor of PHOENIX Pharma, represented by IP Consulting.
In its decision of October 30, 2026, the Opposition Division confirmed that:
- Opposition No. B 3 249 568 was upheld for all contested goods.
- European Union trademark application No. 19 213 731 for PHŌNX was rejected in its entirety.
- The applicant was ordered to pay the costs of the proceedings, fixed at €620.
Importantly, the earlier Bulgarian trademark registration provided sufficient grounds to uphold the opposition.
Therefore, the Opposition Division did not need to examine the other earlier right invoked.
The decision remains subject to the applicable appeal procedures.
What This Decision Means for Trademark Owners
This case illustrates several important principles of European Union trademark protection.
Differences in Spelling May Not Prevent Confusion
First, differences in spelling do not automatically eliminate the likelihood of confusion.
Even shortened or stylized versions of existing trademarks may conflict with earlier trademark rights.
Dominant Verbal Elements Matter
Second, dominant verbal elements can have a significant influence on the overall impression of a trademark.
Additional descriptive wording or decorative graphics may not be enough to distinguish otherwise similar signs.
National Trademarks Can Protect Rights Across the EU
Third, national trademark registrations can provide an effective basis for opposing EU trademark applications.
In this case, a Bulgarian trademark registration supported a successful opposition against an application seeking protection throughout the European Union.
Finally, the decision highlights the importance of examining both the similarity between trademarks and the commercial relationship between their goods.
Protecting Trademark Rights Across the European Union
This successful outcome highlights the value of proactive trademark protection and effective representation in opposition proceedings.
IP Consulting assists businesses with trademark registration, portfolio management, opposition proceedings, and the enforcement of intellectual property rights in Bulgaria and across the European Union.
Whether a business needs to protect an established brand or assess the risks of a new trademark, a carefully developed strategy can help safeguard its intellectual property.
Contact IP Consulting
For assistance with EU trademark registration, opposition proceedings, or trademark protection strategies, contact our team.
Email: office@ipconsulting.eu
Website: https://ipconsulting.eu/
Decision reference: EUIPO Opposition Division, Opposition No. B 3 249 568, October 30, 2026.
Disclaimer: This article summarizes an EUIPO Opposition Division decision for informational purposes. The decision may be subject to appeal and should not be interpreted as a final, unappealable determination.