Mark's meaning may not necessarily be relevant to conceptual assessment

European Union

In Three-N-Products Private Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-63/13, November 7 2013), the General Court has confirmed a decision of the Fourth Board of Appeal of OHIM invalidating a Community trademark (CTM) registration for AYUR which included coverage of the following goods and services:

  • Class 3: "Cosmetics, non-medicated herbal skincare preparations, non-medicated herbal hair care preparations, non-medicated body care lotions; laundry bleach".
  • Class 5: "Herbal preparations for skin treatment, weight control, weight loss and treatment of diabetes; vitamin and mineral preparations and substances; healthcare products; vitamin preparations, mineral preparations for skin treatment, weight loss and treatment of diabetes".
  • Class 44: "Beautician services; massage services; hairdressing; health farm services; beauty SPA services; beauty treatment services; manicuring services; provision of sauna facilities; provision of solarium facilities; consultancy services in the field of herbal remedies, nutrition, health and beauty care".

Following registration of the mark on October 24 2008, the intervener, Munindra Holding BV, applied to invalidate the CTM on the basis of two earlier Benelux trademark registrations for AYUS covering "herbal products for medicinal use" in Class 5, "herbs for non-medicinal use" in Class 30 and "herbs and fresh plants" in Class 31, and "herbal products for medicinal use, mineral based food supplements, medicinal herbs" in Class 5, "food supplements" in Class 29 and "herbal products for non-medicinal use, herbs and food supplements" in Class 30, respectively.

On the basis of the earlier Benelux trademark registrations, Three-N-Products Private Ltd’s CTM registration was found to be invalid by the Cancellation Division of OHIM, and this was confirmed by the Board of Appeal.

Three-N-Products appealed against this decision to the General Court. The General Court dismissed the appeal, finding that the Board of Appeal and the Cancellation Division had been correct to invalidate the registration.

The General Court first confirmed that a likelihood of confusion would be found between two marks when the average consumer believed that goods and/or services bearing the contested mark were economically linked to the earlier mark in question. This assessment was to be made taking a global appreciation of all relevant factors, from the perspective of the relevant public.

The General Court confirmed that the relevant territory was the Benelux countries, as this was the territory in which the earlier marks were registered. The General Court further held that the relevant public would be the average consumer of the products, who would be reasonably circumspect and well-informed. It also confirmed that, as the products covered by the marks were medicinal, the average consumer would have an elevated degree of attention. However, it dismissed Three-N-Products’ argument that, given that all of the goods and services covered by the contested registration concerned the consumer’s well-being, hygiene and physical appearance, the average consumer would have an elevated level of attention. Instead, it agreed with the Board of Appeal’s assessment that the relevant public would pay a normal level of attention to the goods and services covered by the contested trademark, except for those relating to medicinal care.

Further, the General Court confirmed the decision of the Board of Appeal that the goods and services covered by the marks were either identical or highly similar.

The General Court also confirmed that, when assessing the similarity of goods and services, all relevant factors must be taken into account, including the nature of the goods and services, their destination, their use, whether they are complementary and whether they are distributed through the same channels. In particular, the court indicated that, for goods and/or services to be found complementary, one must be necessary or important for the use of the other. Where goods and/or services are aimed at, or are used by, different consumers, they would not be complementary. 

The General Court dismissed Three-N-Products’ argument that the board had incorrectly found that the good and services were highly similar and/or identical.

Three-N-Products argued that:

  1. The goods covered by the earlier Benelux marks in Class 5, and the goods and services covered by the contested registration in Classes 5 and 44 were not identical or highly similar, on the basis that the Board of Appeal had erred in not comparing the products covered by the contested registration and those covered by the earlier marks, but instead had made a comparison of the categories of products in Class 5 covered by the contested mark. However, notwithstanding that the Board of Appeal had erred in this assessment, the General Court found that the board intended to endorse the Cancellation Division’s finding that the goods covered by the marks in Class 5 were identical or highly similar, which it believed was correct.

    The Cancellation Division had considered that herbal products for medicinal use included the herbal products covered by the earlier Benelux marks, and the goods were therefore identical. Equally, the health supplements for medical use, included products covered by the earlier Benelux marks.
     
  2. When comparing the goods covered by the earlier Benelux mark in Class 5 with the services covered by the contested registration in Class 44, the goods were not complementary, were different in nature and had different distribution channels. The General Court disagreed, finding that due to the nature of the goods and services, they were clearly similar. In particular, the court found that the goods and services were complementary, as consultancy services in the field of herbal remedies could exist only on the basis that there were herbal remedies, which were covered by the Benelux mark in Class 5. This was supported by the General Court's and Board of Appeal's view that the goods and services shared the same distribution channels, as herbal remedies are often be sold by consultants.

Three-N-Products did not contest the Board of Appeal’s decision that the goods in Classes 3 and 5 were similar, on the basis of the nature of the goods in question.

The General Court therefore confirmed the Board of Appeal's decision that the goods and services covered by the marks were either identical or highly similar.

Turning to the the comparison of the marks, the General Court confirmed that, when making an assessment of the similarity of marks, their overall impression, including visual, aural and conceptual similarity should be taken into account. 

The Board of Appeal had found that there was moderate visual and aural similarity between the marks, and that neither mark had a conceptual significance. Three-N-Products argued that AYUS had a meaning, originating from the Sanskrit word meaning 'life' or 'longevity', which would be understood by the relevant public. Three-N-Products also argued that relevant case law stated that, when comparing short word marks, the beginning and end of the marks was of particular importance. Given that the concluding element of the marks differed by a letter, and that the relevant consumer would make a conceptual assessment of the marks, understanding Three-N-Products’ mark to have a specific meaning, the similarity between the marks significantly decreased.

However, the General Court disagreed, finding that, given that both words were of the same length, had two syllables and were identical insofar as the first three letters were concerned, this did not impact on the moderate level of aural and visual similarity between the two.

Insofar as the conceptual assessment was concerned, the General Court found that it was unlikely that the relevant public would immediately perceive AYUS as having a meaning, not being familiar with Sanskrit. No evidence had been submitted to demonstrate that the average consumer understands, or has an appreciation of Sanskrit.

However, even if Three-N-Products’ argument, that the average consumer of the goods and services covered by the marks are well versed in alternative medicines, were acceptable, both terms would be interpreted as alluding to the Sanskrit term, the stem of which is used for the term 'ayurveda'. Therefore, this would mean that the marks were conceptually similar, increasing the similarity between the marks.

Making a global appreciation, including the interdependence of the factors such as the similarity between the marks and the goods and services, the General Court confirmed the Board of Appeal’s finding that there was a likelihood of confusion.

Three-N-Products argued that:

  • the earlier marks did not have a distinctive character for a substantial proportion of the relevant public given the meaning of AYUS;
  • the relevant public would perceive the visual and aural differences between the marks, especially because they were relatively short; and
  • the conceptual differences between the marks (in that the later registered mark had a meaning) would counterbalance the visual and aural similarities.

However, the General Court rejected these arguments. It agreed with the Board of Appeal that:

  • the marks were moderately similar;
  • the goods and services were identical and highly similar;
  • the average consumer would have a reasonable level of attention, which would be elevated only where the goods concerned medicinal products; and
  • any conceptual consideration concerning the marks would not affect the similarity between the marks.

On this basis, the General Court confirmed the decision of the Board of Appeal, finding that there was a likelihood of confusion between the marks, and that the CTM registration for AYUS was invalid.

This decision confirms the importance of all of the relevant factors when making an assessment of likelihood of confusion. In particular, it provides a clear indication of where an assessment of complementarity between marks is applicable. Equally, it indicates that, even where a mark has a meaning, it may not necessarily be relevant to a conceptual assessment, where that meaning is not commonly known.

Amanda McDowall and Chris McLeod, Squire Sanders (UK) LLP, London

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