General Court: visual similarity more important where goods are usually sold in self-service stores

European Union

On May 21 2015 the General Court issued its judgment in Case T-56/14 between Evyap Sabun Yag Gliserin Sanayi ve Ticaret AS, the Office for Harmonisation in the Internal Market (OHIM) and Megusta Trading Gmbh.

The dispute arose from an application, filed on August 9 2001 by DVD1.CH Gmbh under the Community Trademark Regulation (207/2009), for the registration of the following figurative sign:

The application covered “articles for body and beauty-care” in Class 3 of the Nice Classification. It was later transferred to Megusta Trading.

On November 23 2011 Evyap filed a notice of opposition under Article 41 of the regulation based on the following prior signs:

  • the Czech word mark DURU, registered under No 225 515 on July 21 2000 and renewed until February 8 2019 in Class 3, and corresponding to the following description: “body care and beautification preparations”;
  • the Slovak word mark DURU, registered under No 192 722 on October 19 2000 and renewed until February 12 2019 in Class 3, and corresponding to the following description: “body care and beautification preparations”;
  • the international figurative mark No 802 256, registered on November 7 2002 and covering Class 3:
  • the Bulgarian figurative mark No 29 149, registered on October 24 1996 and renewed until December 18 2015 in Class 3:
  • the Romanian figurative mark No 31 665, registered on May 31 1999 and renewed until February 6 2016 in Class 3:

The opposition was based on Article 8(1)(b) of the regulation (likelihood of confusion between the signs). It was rejected in its entirety on August 7 2012 by the Opposition Division of OHIM.

On October 8 2012 Evyap filed an appeal with OHIM under Articles 58 to 64 of the regulation. Moreover, Megusta Trading - in agreement with Evyap, which would have withdrawn its opposition if the amendment had been accepted by the Board of Appeal - requested that the goods covered by the application for registration be limited to “articles for body and beauty-care, namely gels for sexual purposes”.

The Fourth Board of Appeal of OHIM dismissed Megusta Trading’s request for a limitation of the goods and dismissed the appeal. The board held that the mark applied for would be perceived by the relevant public (whose level of attentiveness was considered to be rather low) as a "figure forming a wiggly line and not as a sequence of letters forming a word”. Therefore, it was not possible to make an aural and conceptual comparison of the marks at issue, taking into consideration also that the mark DURU had no meaning for the relevant public.

Evyap appealed to the General Court, alleging infringement of Article 8(1)(b) of the regulation and raising two complaints:

  1. the Board of Appeal had exceeded its discretion; and
  2. the Board of Appeal had erred in assessing the likelihood of confusion between the marks.

With regard to the first complaint, Evyap claimed that the Board of Appeal should have judged that the mark applied for was the mark NURU in stylised letters and should not have considered that it was a figurative mark, since Megusta Trading had never put forward arguments that could support this conclusion.

Moreover, Evyap stressed that the mark applied for was indicated as the sequence of letters 'n-u-r-u' in OHIM’s databases and other documents.

The court dismissed the first complaint based on the following reasoning:

  • “[W]here it determines the relevant public’s perception of a mark applied for, the Board of Appeal is by no means bound by the explanations given by the parties. On the contrary, it is for the Board of Appeal to make its own interpretation of the mark at issue”.
  • The way in which the mark applied for is designated in OHIM’s databases has only administrative purposes and has no bearing on the lawfulness of the board's decision.

With regard to the second complaint, Evyap argued that the Board of Appeal had erred in finding that the mark applied for was a wiggly line divided into four stylised elements, which would not be perceived by the relevant public as the sequence of letters 'n-u-r-u' written in a stylised font. Consequently, Evyap argued that the marks at issue were similar because “their length, structure, number of letters, colour and last three letters, namely ‘u’, ‘r’ and ‘u’,... are identical”.

The General Court held as follows:

  • For body and beauty-care articles, in contrast with what was found by the Board of Appeal, the relevant public consisted of reasonably well informed consumers.
  • The mark applied for was generally perceived by the relevant public as a figure forming a wiggly line and not as a sequence of letters forming a word.
  • The relevant public would most probably interpret the wiggly line by comparing it with letters of the Latin alphabet, and would perceive it as resembling 'n-u-r-u' or 'n-u-p-u'.

With regard to the visual comparison, the court held that “the high stylisation of the figurative elements of the mark applied for has a distinctive and dominant character in the overall view of the mark”, while the interpretation of the wiggly line as Latin alphabet letters has only a low degree of inherent distinctiveness. Therefore, the marks had a low degree of visual similarity since the similarities were not sufficient to offset the overall visual differences.

The aural comparison, in contrast, needed to take into account the way in which the relevant public would pronounce the mark applied for. The court found as follows:

  • There were some similarities with the earlier mark DURU for the part of the relevant public that would pronounce the mark applied for with the letters ‘n’, ‘u’, ‘r’ and ‘u’; and
  • The similarity would be reduced if the mark applied for were to be pronounced with the letters ‘n’, ‘u’, ‘p’ and ‘u’.

The different ways in which the mark applied for could be pronounced implied a low degree of aural similarity.

Moreover, a conceptual comparison was not possible since the marks at issue were devoid of meaning for the relevant public.

Based on the foregoing, and considering that the goods covered by the marks are bought by the relevant public through self-service stores by relying on the image of the trademark applied to the product, the court held that the visual aspect played a greater role in the global assessment of the likelihood of confusion between the marks. As the court noted, “the visual, aural or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market". The General Court did not exclude the possibility that the goods could be sold through oral communication, but underlined that the choice of the product was generally made visually.

The court thus concluded that the Board of Appeal had not erred in finding that there was no likelihood of confusion between the marks at issue, even though they covered identical goods.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan

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