OHIM Board of Appeal erred in finding ‘nico’ marks to be dissimilar

European Union

In McNeil AB v Office for Harmonisation in the Internal Market (OHIM) (Case T-580/11, June 6 2013), the General Court has considered the likelihood of confusion between the trademarks NICORONO and NICORETTE.  

In 2008 Alkalon ApS filed a community trademark application for the word mark NICORONO for various goods, including smoking cessation products and chewing gum. Upon publication of the application, McNeil AB filed an opposition based on its earlier trademark NICORETTE for identical goods. The Opposition Division of OHIM upheld the opposition. Alkalon appealed.

The Board of Appeal annulled the decision of the Opposition Division and rejected the opposition. The board held that:

  • the relevant public was composed of professionals and end consumers of pharmaceutical preparations; and
  • due to the weak distinctive character of the common element 'nico' at the beginning of each mark, the attention of the relevant public would be drawn to the end of the marks.

The board thus found that there was no likelihood of confusion.

McNeil brought the matter before the General Court. The case centred around the question of the likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (207/2009), including the level of attention of the relevant public and the similarity of the marks at issue.

It is settled case law that the average consumer’s level of attention is likely to vary according to the category of goods.

The court’s decision contains a lengthy reasoning on the level of attention with regard to the relevant goods, stating that it is determined by two circumstances. The first concerns the presence of professionals, including health professionals, among the relevant public, and the second relates to the characteristics of the smoking cessation products, which affect the state of health of the end consumers. Interestingly, the court held that the level of attention of the relevant public is not affected by the fact that the relevant products are mass market consumer goods. The court concluded that the level of attention of the relevant public would be high or, at least, higher than average.

The court agreed with the Board of Appeal that the element 'nico', which forms the first part of both marks, will be perceived by the relevant public as a reference to nicotine. This goes for smokers, as well as non-smokers. This finding is perhaps unsurprising in itself, but its consequences are quite interesting. The Board of Appeal took the view that 'nico' was a weakly distinctive element that did not dominate the overall impression, and that the marks were dissimilar.

Referring to case law, the court noted that the relevant public would tend to separate the marks NICORONO and NICORETTE into two elements. The first and common element 'nico' will be perceived as an allusion to nicotine, whereas the remaining elements have no clear meaning.

In the assessment of the similarity between NICORONO and NICORETTE, various aspects had to be considered:

  • Consumers normally attach more importance to the initial part of a trademark.
  • As the initial part of each mark had a weak distinctive character in relation to the goods, the relevant public would attach more importance to the final part.
  • The initial part 'nico' is longer (two syllables) than the final part of the earlier mark (one syllable) and as long as the final part of the mark applied for (two syllables); therefore, it made a significant contribution to the overall impression of the marks.

Balancing the arguments, the court found that, despite the weak distinctive character of the element 'nico', it was likely to attract the attention of the relevant public at least as much as the remaining elements and made a significant contribution to the overall impression produced by the marks.

The court considered the marks to be conceptually similar because of the conceptual content of the element 'nico', and found that there was a likelihood of confusion.

The position of the Board of Appeal that the weak character of the element 'nico' would allow the co-existence of the marks NICORONE and NICORETTE appears to be very practical. A narrow protection of elements with a clearly allusive content seems to be reasonable in order to prevent businesses from monopolising such elements and restricting competition.

It will be interesting to see whether the matter is brought before the Court of Justice of the European Union and how the question of likelihood of confusion would then be dealt with.

Lisbet Andersen, Bech-Bruun, Copenhagen

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