General Court: retail and mail order services in perfumery field complementary to perfumery goods
In Nanu-Nana Joachim Hoepp GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-89/11), the General Court has upheld a decision of the First Board of Appeal of OHIM to allow an opposition to the registration of the word mark NANU for certain goods and services on the grounds of likelihood of confusion. This case is a reminder of how to assess similarity where there are complementary goods, or certain goods versus retail and mail order services in relation to those goods, and highlights the importance of visual, phonetic and conceptual similarity when comparing marks.
Nanu-Nana, a German retailer, filed a Community trademark (CTM) application for the word mark NANU in August 2007 in respect of a range of goods and services, including cosmetics, candles, furniture, textile goods, and retail and mail order services in relation to household articles and perfumery. Vincci Hoteles, a Spanish hotel chain, opposed all goods and services in the application, asserting a likelihood of confusion (Article 8(1)(b) of the Community Trademark Regulation (207/2009)) with its earlier word CTM NAMMU, registered in July 2007 (just one month prior to Nanu-Nana’s application) and covering goods and services including cleaning, cosmetic and perfumery products, beverages and health-related services.
At first instance, the opposition was upheld for some goods and services in Classes 3, 4, 16, 21 and 35; the First Board of Appeal annulled this decision, but confirmed the rejection of the CTM application for certain goods and services in Classes 3, 21 and 35, including cosmetics, toothbrushes and retail and mail order services, namely in the field of perfumery. (A separate legal action brought by Nanu-Nana to invalidate the NAMMU mark found the opposition proceedings stayed until 2013 when the Cancellation Division rejected the request for a declaration of invalidity.)
Nanu-Nana’s appeal to the General court challenged the Board of Appeal’s findings insofar as it had upheld the opposition, arguing that the marks’ visual and conceptual differences outweighed any low degree of phonetic similarity, and that the goods and services covered by the NANU mark differed to those covered by NAMMU. It was not disputed that the relevant public consisted of the general public in the European Union, who possessed a normal degree of attentiveness.
With regard to the similarity of the goods and services, reference was made to DEMON (Case T-380/12), which specifies relevant factors to take into account when comparing goods or services, including their:
- intended purpose;
- method of use;
- competing nature;
- complementarity; and
- channel of distribution.
The DEMON case also held that the fact that consumers regard a product as complementary to another is not sufficient for them to believe that those products are of the same commercial origin. Consumers would also have to consider it normal for those products to be sold under the same mark.
Applying this to the case at hand, it was not disputed by either party that the goods in Class 3 covered by NANU and those in Class 3 covered by NAMMU were identical or similar. In contrast, the toothbrushes in Class 21 covered by NANU and the dentrifices in Class 3 covered by NAMMU were a point of dispute, and the General Court agreed with the Board of Appeal that there was a high degree of similarity between the goods: toothbrushes and dentrifices may be produced by the same undertaking and sold under the same mark and, importantly, consumers could expect the goods to have a shared commercial origin; toothbrushes and dentrifices are sold via the same distribution channels and are made available to consumers in the same shelf areas. Whilst the goods differed in nature, the court considered them to be complementary and to have the same purpose of dental health and hygiene.
Regarding retail and mail order services in the field of perfumery as compared with perfumery goods, the General Court agreed that the services were complementary to the goods and shared the same distribution channels. Nanu-Nana’s argument that retailers or mail order companies in the field of perfumery are usually legally distinct entities from the manufacturers of perfume was not considered to affect the consumer’s establishment of a relationship between the services and the goods; such a generalisation could not be made across the perfumery industry. The court noted that perfumery manufacturers might have their own network of sales sites or distribution agreements in place such that services offered to the consumer which ostensibly encourage the purchase of perfumery goods may generally be provided, arranged or approved by the manufacturer. To this extent, O STORE (Case T-116/06) applied.
With regard to the similarity of the marks and the likelihood of confusion, the court confirmed the Board of Appeal’s finding that the two marks shared a high degree of visual and phonetic similarity. Visually, the differences in the number of letters and in the middle parts of the signs were insufficient to cancel out the similarities, with emphasis placed on the fact that several common letters were in the same order, which was considered of greater importance visually than the total number of letters in each mark. Phonetically, the court noted that the marks contained the same number of syllables and indeed had the same first syllable and the same ending to the second syllable. The pronunciation of the double consonant ‘M’ relative to the single ‘N’ did not alter the similarity. The lack of meaning for 'nammu' and the niche meaning of 'nanu' to the Maltese-speaking public in the European Union ('dwarf') prevented any conceptual comparison for EU consumers (the court did not believe consumers would associate 'nammu' with the Sumerian goddess Nammu).
Nanu-Nana did not dispute that the earlier trademark NAMMU had a normal distinctive character, and the General Court agreed that the significant similarities between the marks at issue resulted in a likelihood of confusion for those goods and services deemed similar or identical to those goods covered by the earlier mark, taking into account the principles of imperfect recollection and interdependence.
Jennifer Heath, D Young & Co LLP, London
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