Similarity of goods cannot outweigh clear lack of similarity between marks

European Union
In Procter & Gamble Manufacturing Cologne GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-107/10, September 29 2011), in upholding a decision of the Second Board of Appeal of OHIM dated November 23 2009, the General Court has determined that there was no likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation (207/2009) between Natura Cosméticos SA's mark NATURAVIVA in Classes 3, 5 and 22 of the Nice Classification and Procter & Gamble Manufacturing Cologne GmbH (P&G)'s prior Community trademark (CTM) VIVA in Class 3.

Article 8(1)(b) provides that, upon opposition by the owner of an earlier mark, the mark applied for must not be registered if, because of its identity with or similarity to an earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. 

In its appeal, P&G argued that:
  • the marks VIVA and NATURAVIVA were to be applied to identical and similar goods;
  • the marks were themselves similar; and
  • therefore, there was a likelihood of confusion in the European Union between the marks such that NATURAVIVA should not be registered as a CTM.
The interpretation of Article 8(1)(b) requires both that the marks in issue are identical or similar, and that the goods and services that they cover are identical or similar in order to show a likelihood of confusion in the eyes of the relevant consumer. Although the territory to be considered is the whole of the European Union, it is sufficient if confusion can be shown in only a part of the European Union. 

It was not in dispute that the relevant market was the average consumer nor that, because of the nature of the products in question (ie, general hygiene and body care products and cosmetics), such consumers would pay more attention to the purchase of those products than they would to common everyday goods given the importance they might attach to how they feel and look (and smell). There was also no dispute between the parties as to the finding of the Board of Appeal that the goods and services at issue were similar or identical. 

The issue therefore turned on the similarity of the marks in the light of the relevant market. According to previous case law, this, as part of the global assessment of the likelihood of confusion, is based upon the overall impression produced in the mind of the average consumer by the marks in relation to their visual, phonetic or conceptual similarity, bearing in mind their distinctive or dominant components. In assessing the overall impression, the court has decided previously that the average consumer normally looks at the mark as a whole and will not analyse its different components. The Board of Appeal had decided that the two marks were visually, phonetically and conceptually dissimilar and that the mark NATURAVIVA appeared as a single indivisible word, with both 'Natura' and 'Viva' having a weak distinctive character.

In response, P&G argued that 'Viva' would be perceived as the dominant element of the mark and that 'Natura', having a weak distinctive character, would be disregarded by the relevant public, leading to confusion by association. P&G's second argument was that the element 'Viva' retained an independent distinctive position, as the consumers would distinguish between the word 'Natura', as the producing company's name, and the verbal element 'Viva'.

The court's analysis of the first argument required the understanding of each element to be considered. 'Natura' would be understood to mean 'nature' or similar by Spanish, Portuguese, French, English and German consumers, while 'Viva', meaning 'alive' or similar to Spanish, Portuguese, Italian and French consumers, would conjure the image of vitality of the skin, body, hair and mind. When assessed as a single word, the court determined that some of the public would perceive the NATURAVIVA mark to refer to 'living nature' or similar, while the remainder may either understand some or none of the mark. As the same imagery could be conjured by the relevant public when considering the elements either in isolation or conjunction, it was apparent that neither could be considered a dominant element. Given that both elements possessed equally weak distinctive characters, P&G's argument that the relevant public would disregard the 'Natura' element and retain 'Viva' as a more obvious descriptor for the goods and services on offer was dismissed.

In dismissing P&G's second argument, the court scrutinised the constitution of the NATURAVIVA mark, determining that a large proportion of the relevant public would perceive the word 'Viva' as a qualifying adjective to the accompanying noun 'Natura', forming the compound logical unit 'Naturaviva'. As a result, the court decided that 'Viva' did not have an independent distinctive position within the mark.

As neither element was considered dominant, the mark had to be taken as a whole when being assessed in relation to the visual, phonetic, and conceptual similarities. Considering the visual impact of the mark, the court noted, firstly, that NATURAVIVA was longer than VIVA. Second, it determined that, because the word 'Viva' is located at the end of the mark, the element 'Natura' was likely to have more of an impact on consumers in terms of overall impression. From a phonetic point of view, on the premise that the average consumer would emphasise the beginning of the word more and that the consumer's attention would focus primarily on the first three syllables, the court decided that the phonetic sequences were different to one another. Conceptually, the court decided that the two marks were clearly dissimilar for those consumers who understood their meaning, whereas, for the rest, a conceptual comparison was irrelevant as neither have a clear or precise meaning.

As a result, the court concluded that the marks were different. Although the goods and services covered by each mark were identical, the marks themselves were visually distinct, the relevant public for whom the signs did not have a clear meaning would see them as phonetically different, and the relevant public who understood their meanings would deem them to be conceptually distinct. Following the principle that the similarity of goods and services cannot outweigh a clear lack of similarity between the two marks, the court concluded that there was no likelihood of confusion within the meaning of Article 8(1)(b). The appeal was therefore dismissed, allowing NATURAVIVA to be registered.

Mark Lubbock and Alex Cravero, Ashurst LLP, London

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