NL clothing marks hung out to dry

In New Look Ltd v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld a decision to refuse the registration of NLSPORT, NLJEANS, NLACTIVE and NLCOLLECTIONS as Community trademarks for clothing. It held that the marks were likely to cause confusion with the earlier Community trademark NL registered for the same type of goods.

New Look Ltd, a clothing retailer based in the United Kingdom, applied to register the marks for goods in Class 25 of the Nice Classification. Spanish company Naulover SA opposed registration on the basis of its earlier Community trademark NL also registered for goods in Class 25.

The Opposition Division of the OHIM dismissed Naulover's claims stating that the signs at issue were visually and phonetically different, and that consumer confusion was unlikely. Naulover appealed.

The Board of Appeal overturned the Opposition Division's decision and dismissed New Look's applications. In the board's opinion, the dominant element of each of New Look's signs was the 'NL' combination of letters, since the other words were not particularly distinctive in the clothing industry. The dominant elements of these signs and the opposing NL mark were therefore phonetically and conceptually similar. This time, New Look appealed.

The CFI dismissed the appeal and refused registration. It noted that there was a risk that the relevant public would believe that the goods covered by both sets of marks originated from the same source or from economically linked undertakings. According to the CFI, the fact that the dominant NL element of the earlier mark was wholly incorporated in the dominant elements of each of the signs applied for justified the conclusion that there was phonetic similarity between the two sets of marks. In particular, it observed that while the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details, in general, the distinctive and dominant features of a sign are those more easily remembered. Therefore the Board of Appeal correctly based its reasoning on the elements of the signs that would be more dominant in the minds of consumers.

The CFI also held that the conceptual content of New Look's marks reinforced the public's perception of them as sub-brands of Naulover's prior registered NL mark. This, again, was likely to cause confusion.

Margherita Barié and Pietro Pouchè, McDermott Will & Emery/Carnelutti Studio Legale Associato, Milan