OHIM erred in finding low degree of similarity between Class 24 goods and Class 35 services

A lengthy trademark dispute spanning six years has finally culminated in a General Court decision in November 2014 (Natura Selection v Office for Harmonisation in the Internal Market (Case T-549/10)).

In May 2008 Afoi Anezoulaki (trading under the name Fieratex SA) applied for the word mark NATUR in relation to goods in Class 24 of the Nice Classification, being “textiles and textile goods, not included in other classes; bed and table covers”.

In late 2008 Natura Selection SL filed a notice of opposition under Article 8(1)(b) of the Community Trademark Regulation (207/2009) against Anezoulaki’s mark, concerning all goods. The opposition was based on three earlier marks (the latter being at the application stage only):

The earlier NATURA application (shown far right above) covered goods in Class 20 and the following services in Class 35:

“Commercial retailing and via worldwide telematic networks; import and export services; advertising services; all the above relating to precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother of pearl, meerschaum and substitutes for all of these materials, or of plastics; textiles and textile goods, not included in other classes; bed and table covers; clothing, footwear, headgear” (our emphasis).

The Opposition Division of OHIM upheld the opposition in respect of some of the disputed goods, namely “textiles and textile goods, not included in other classes; bed covers”, but allowed it for “table covers”. The opponent appealed the decision insofar as it allowed the contested mark to be registered in respect of “table covers”.

The Board of Appeal of OHIM dismissed the appeal. In particular, the board found that, since the goods "table covers" covered by the contested mark and the goods/services covered by the earlier application for NATURA were dissimilar, there was no likelihood of confusion. It was not relevant how similar the signs themselves might be.

The opponent again appealed, this time to the General Court. In response, OHIM stated that the proceedings should be stayed as there was an ongoing opposition against the opponent’s earlier NATURA application. However, the General Court rejected this submission as it was noted that the proceedings against the NATURA mark did not concern the services in Class 35, but only the Class 20 goods, which were not relevant in the current opposition. Further, the General Court commented on how OHIM had made confused submissions in relation to the NATURA opposition and had incorrectly stated that the NATURA mark had ceased to exist when that was only relevant to the Class 20 goods.

The opponent submitted that the Board of Appeal had erred in finding the goods/services of the earlier marks were different and that there was no likelihood of confusion. The General Court provided a useful overview of the assessment of similarity between goods/services, reminding the parties that all relevant factors needed to be taken into account including:

1. their nature;
2. their intended purpose and method of use;
3. whether they are in competition with each other or are complementary; and
4. the distribution channels.

Further, it was explained that there may well be a finding of similarity between goods and retail services which relate to such goods, as such services can be “one of the possible distribution channels”.

The court held that, in this opposition, the services in Class 35 covered by the earlier application did relate to the goods in Class 24 of the contested mark, not surprising as both mentioned “table covers”. There was a similarity between the "commercial retailing and via worldwide telematics network" of table covers covered by the earlier mark, and the "table covers" claimed by the contested mark.

The Board of Appeal had therefore erred in finding a low degree of similarity, upon which it had made its ruling of no likelihood of confusion between the marks. However, the case is not quite finished yet as, pursuant to Article 65(6) of the regulation, the matter will now return to OHIM to take the necessary measures following this General Court judgment of a finding of similarity.

This opposition can perhaps act as a demonstration of perseverance, and a reminder that OHIM and the Boards of Appeal can make mistakes.

Verity Ellis, D Young & Co LLP, London