OHIM decision upheld despite error as to overall impression of marks

European Union
In XXXLutz Marken GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-54/09, March 24 2011), the General Court has dismissed an appeal against a decision of the Second Board of Appeal of OHIM in which the latter had upheld an opposition to the registration of a figurative mark containing the words 'Linea Natura Natur hat immer Stil'.

The application was filed in September 2005 by the previous applicant, LN-Möbelhandels GmbH, for a range of goods in Classes 8, 14, 16, 20, 21, 24, 25 and 27 of the Nice Classification. On publication in June 2006, Natura Selection SL opposed the application under Article 8(1)(b) of the Community Trademark Regulation (40/94) on the basis of various Community trademarks (CTMs) and Spanish earlier rights containing the word 'natura' and registered for various goods and services in Classes 3, 14, 16, 20, 25, 28, 35, 38, 39 and 42. In May 2007 the transfer of the application from the former applicant to XXXLutz Marken GmbH was recorded in the official register. The Opposition Division of OHIM upheld the opposition in its entirety on the basis of CTM registration 2016384 for the figurative mark NATURA SELECTION.

XXXLutz appealed and, in November 2008, the Second Board of Appeal of OHIM dismissed the appeal. Interestingly, the board held that the element 'natura' formed the dominant and distinctive element of the earlier mark. It argued that the representation of the globe at the centre of the mark had only a low degree of distinctiveness, being frequently used in trade to emphasise the international character of goods and services. Moreover, the board considered the element 'selection' to be weakly distinctive, as it would be understood as a mere reference to an assortment of items from which a choice could be made. As a consequence, the board concluded that the word 'natura' would be perceived as the dominant and most distinctive element. Therefore, there was a likelihood of confusion on the part of the average consumer.

XXXLutz appealed to the General Court based on the sole plea that the board had incorrectly assessed the likelihood of confusion under Article 8(1)(b) of the regulation.

The General Court took the view that both the Opposition Division and the Second Board of Appeal had erred in assessing the marks’ overall impression, because the element 'natura' was not a dominant or distinctive element in either of the marks. Because of this error, the board had incorrectly assessed the visual similarity of the marks.

Nevertheless, the General Court dismissed XXXLutz’s appeal. It considered the visual and phonetic similarities of the marks and held that the marks were only remotely similar. The court then considered the conceptual similarity of the marks. It agreed with the board that the words 'Linea' and 'selection' would be associated with descriptive or laudatory meanings and, therefore, would not be retained in the public’s memory. The word 'selection' would be understood only as a reference to an assortment of items from which a choice could be made, and the word 'Linea' as a reference to a line of products. Because of the presence of the element 'natura' in both marks, the court concluded that the marks had similar conceptual connotations.

The identity or similarity of the contested goods and the goods and services of the prior registration was not in dispute.

Following a global assessment of the likelihood of confusion, the General Court concluded that, despite the incorrect assessment of the dominant and distinctive elements of the marks, and because of the conceptual similarity between the signs, together with the degree of identity and similarity between the goods, the board had been correct to uphold the opposition.

Interestingly, the General Court elected to place emphasis on the word 'natura' in each mark at the expense of the remaining word and graphic elements. It is arguable that the remaining elements would have allowed a different approach resulting in a rejection of the opposition. The decision demonstrates that terms which, at first sight, may seem to have a low level of distinctiveness ('natura' being allusive to nature and natural things) can prove to be surprisingly strong.

Florian Traub, Squire Sanders & Dempsey (UK) LLP, London      

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