The General Court of the Court of Justice of the European Union, in its decision T-602/19 (October 5, 2020), evaluated the likelihood of confusion between two word marks that commonly include a word element having a low distinctive character.
Eugene Perma France (the applicant) filed an application with the European Union Intellectual Property Office (EUIPO) in order to register the word mark “NATURANOVE” for goods which fall within Class 3 of the Nicé classification, which can be briefly summarized as “cosmetics and hair care products (hair lotions, hair sprays, hair dyes, shampoos, etc.)”.
After the application was published, SPI Investments Group, SL (the opponent) filed an opposition, citing the word mark “NATURALIUM” as the grounds for opposition. The trademarks, which are the grounds for opposition are registered in EUIPO and in Spain to cover “Cosmetics and hair lotions” in Class 3.
The EUIPO Opposition Division accepted the opposition on the grounds of likelihood of confusion and refused the application. The Board of Appeal of EUIPO dismissed the applicant’s appeal against this decision and approved the refusal.
In the decision of the Board of Appeal; although it was stated that the word “NATURA”, which constitutes the common part of the word marks “NATURANOVE – NATURALIUM”, evokes an association with the word “nature” and has a weak distinctive character in this respect for the goods within the scope of the application, the trademarks were found to be visually and phonetically similar to an average degree, it was determined that the trademarks covered the same goods and it was concluded that from the point of view of the general public to whom the goods are addressed, there may arise a likelihood of confusion that the trademarks come from the same or affiliated businesses.
The applicant took the refusal decision to the General Court and the dispute was then examined by the judiciary.
The applicant claimed that the trademarks were not visually and phonetically similar due to the facts that the word “natura” directly evokes an association with the word “nature” and its distinctive character is weak in this respect, and that the remaining parts of the trademarks, namely “_NOVE” – “_LIUM” are completely different.
Nonetheless, EUIPO claimed that the word “natura”, although its distinctive character is weak, is not directly descriptive, both trademarks consist of ten letters, the word “natura” constitutes the beginning of the trademarks, consumers focus on the beginning part of the trademarks, and in this context the trademarks are visually and phonetically similar to an average degree, the goods are the same, and that, in this case where the goods are the same and the trademarks are similar to an average degree, the mentioned points compensate for the low distinctive character of the common word element within the framework of the principle of interdependence, and therefore likelihood of confusion between the trademarks will arise.
In its evaluation, the General Court first of all approved the Board of Appeal’s findings that the goods covered by the trademarks are identical and that the average consumer of the goods is the general public.
Then, the similarity between the marks was evaluated.
According to the General Court; although both of the trademarks, “NATURANOVE” – “NATURALIUM”, begin with the word “NATURA” and consist of the same number of (ten) letters, the phrases “_NOVE” and “_LIUM” following the word “NATURA” differ radically visually and phonetically. In addition to this, according to the Court; since the distinctive character of the word “NATURA”, which constitutes the common element of the trademarks, is weak in terms of the goods under examination, it should be taken into account that the last four letters of the trademarks are extremely different from each other, regardless of the facts that the common element is at the beginning of the trademarks and the trademarks consist of the same number of letters, and it should be concluded that the difference in the endings of the trademarks plays an important role in determining the commercial origin of the concerned goods. Therefore, the Board of Appeal’s approach based on opposite findings is not right and that contrary to what the Board of Appeal determined, the trademarks contain low degree of similarity, not average.
In the continuation of the decision, the General Court evaluated the distinctive power of the trademark “NATURALIUM”, which is the ground for refusal. Although the Board of Appeal recognized the weak distinctive character of the term “NATURA”, it considered the word “NATURALIUM” as a trademark having a normal degree of distinctiveness as a whole. Contrary to this, the General Court accepted the word “NATURALIUM” as a trademark with a weak distinctive character as a whole, since the phrase “NATURA” was at the beginning of the trademark and had a weight of around 60% in the whole word mark, and did not find the contrary decision of the Board of Appeal right.
Finally, within the framework of its above-mentioned findings, namely the following evaluations;
- The weak distinctive character of the word “NATURA”,
- Low degree of visual, aural and conceptual similarity between the phrases “NATURANOVE” and “NATURALIUM”,
- The low distinctive character the trademark “NATURALIUM”, which is the ground for refusal,
the General Court concluded that the application and the trademark, which is the ground for refusal, will produce different impressions for the relevant public and that likelihood of confusion will not arise between the trademarks.
Within this context, the refusal was not found right, and the decision of the Board of Appeal was annulled.
Since I also believe that the decision of the Board of Appeal of EUIPO is not right, I cannot help but mention that I find the General Court’s approach and conclusion justified. It has become an undeniable commercial practice that the words (nature, natur, natural, etc.), which emphasize or evoke an association with the naturalness of goods in sectors such as cosmetics, food, beverage and in fact not only limited to these but in almost all areas of trade, are included in trademarks. In this context, the course of action taken by the earlier right holders, who have registered the trademarks containing the words in question, to prevent the use of the same words in later applications, has no significance other than an attempt made to prevent the smooth functioning of trade.
The following evaluation cited in paragraph 71 of the General Court’s decision should always be kept in mind by companies that choose trademarks with a low distinctive character: “it is clear from the decision-making practice of the Boards of Appeal of EUIPO and the case-law of the Court that, although a company is free to choose a trade mark with a low degree of distinctiveness and use it on the market, it must accept, however in doing so, that competitors are equally entitled to use trademarks with similar or identical descriptive components“.