OHIM held to have erred in finding complementary connection between goods

The issue of the similarity of goods has yet again come under scrutiny by the General Court. In Nuna International BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-195/12, September 23 2014), the court provided useful guidance on the criteria to be applied in connection with the often-complicated assessment of the likelihood of confusion.

In 2007 Nuna International BV applied for the registration as a Community trademark of the mark shown below:

The application covered various goods for babies and children, including:

• strollers, buggies and safety car seats for children in Class 12;
• baby carrier bags, diaper bags and backpacks for children in Class 18;
• baby walkers and sleeping bags for baby and children in Class 20; and
• swings for children in Class 28 of the Nice Classification.

Nana Joachim Hoepp GmbH & Co filed an opposition based on the earlier word marks NANA and NANU-NANA, which covered a broad range of goods not specifically related to babies. The Opposition Division of OHIM found that there was no likelihood of confusion and rejected the opposition.

Nanu-Nana appealed. The First Board of Appeal of OHIM upheld the opposition for all the goods covered by the mark applied for. The board found that these goods were identical or similar to the goods covered by the earlier marks and that there was likelihood of confusion. Somewhat surprisingly, the board also found, among other things, that strollers, buggies and safety car seats for children were similar to playthings.  

Nuna International brought the matter before the General Court, claiming that there was no likelihood of confusion.

One of the issues considered by the court was the definition of the relevant public. In this respect, Nuna International claimed that parents who buy goods for their babies must be categorised as specialist consumers whose level of attention is much higher than that of average consumers, and submitted that the goods covered by the mark applied for were specifically intended for babies, were expensive purchases and had to comply with certain safety requirements.

The court was not convinced by Nuna International’s arguments. Even though parents of babies and young children may have a high level of attention when purchasing the relevant goods, the group of average consumers of those goods would not consist exclusively, or even principally, of particularly attentive parents, but also of persons who buy the goods as gifts.

With regard to product safety, the court stated that, as the goods were marketed in the European Union, consumers would expect them to comply with acceptable safety standards. This view might appear somewhat liberal. However, the court’s conclusion that the relevant public consisted of average, reasonably well-informed and reasonably observant and circumspect consumers in the European Union probably came as no surprise.

Turning to the comparison of the goods, the court pointed out that, according to case law, all relevant factors should be taken into account in the assessment of the similarity of the goods, including their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. The court went on to consider whether all the goods covered by the application were in fact identical or similar to the opponent’s goods and agreed with the Board of Appeal to some extent.

With regard to "strollers, buggies and safety car seats for children" in Class 12, the court disagreed with the Board of Appeal’s view that these goods were similar to "playthings" in Class 28. The court held that "strollers, buggies and safety car seats" for children are made for transport of babies or children, whereas dolls and other playthings are for babies or children to play with. The intended purpose and method of use of the goods are different, and the goods in question are not interchangeable and not in competition with each other. The court did not follow the board’s reasoning that playthings for babies could be attached to strollers or safety car seats for children and that, therefore, there was a complementary connection.

The court also disagreed with the Board of Appeal’s finding that there was a similarity between, on the one hand, "sleeping bags for baby and children, baby walkers, cribs, high chairs, bouncing seats, baby rocking chairs and carry cots" in Class 20 covered by the mark applied for and, on the other hand, "playthings" in Class 28 covered by the earlier marks. However, with regard to some of Nuna International’s goods in Class 20, namely "cribs, high chairs, bouncing seats, baby rocking chairs and carry cots", the court found that they were included in the general term ‘furniture’ covered by the earlier marks.

With regard to the likelihood of confusion, and contrary to the view taken by the Opposition Division, the court held that the average consumer would perceive and pronounce the sign applied for as ‘nuna’, and would not simply perceive it as curves or semi-circles. The court found that there was a visual and phonetic similarity between the mark applied for and the earlier NANA mark, and a slightly lower degree of similarity between the mark applied for and the earlier NANU-NANA mark.

Based on the similarity of the marks, the Board of Appeal’s decision was upheld in respect of the goods that the court found identical and similar to those covered by the earlier marks. For the dissimilar goods, the decision was annulled.

As a new argument, Nuna International submitted before the court that the NUNA mark had a high degree of distinctiveness and a considerable reputation, which precluded a likelihood of confusion. The argument and related documentation were rejected on the ground that they had been produced for the first time before the court.

The court’s decision must be welcomed as an illustrative example of the limits of the concept of complementary goods. The intended purpose of playthings is clearly different from that of safety car seats for children.

The Board of Appeal’s view on complementarity might provide support for the argument that all goods for use in connection with a defined group of people (eg, children) have something in common and are therefore similar. This could lead to much uncertainty. However, the court’s decision shows that this argument is not sufficient to conclude that such goods are automatically similar from a trademark point of view.

Lisbet Andersen, Aumento Advokatfirma, Copenhagen