In a recent decision, the General Court considered that ‘PANTA RHEI’ was confusingly similar to the earlier EU trade mark ‘PANTA RHEI’. In particular, the General Court found that, on account of the identity of the two signs and despite the low degree of similarity between the goods, the Applicant’s mark was still capable of giving rise to a likelihood of confusion on part of the relevant public.
In September 2017, Stefan Makk (the Applicant) obtained an international trade mark registration designating the EU for the word mark “PANTA RHEI”. Registration would be for goods in Class 5 (pharmaceuticals, dietetic food supplements for medicinal purposes, nutritional supplements, non-alcoholic beverages adapted for medical purposes for the prevention and curative treatment of eye diseases, and non-alcoholic dietetic beverages for medical purposes) of the Nice Classification.
In April 2019, Ubati Cosmetics, SL (the Intervener) filed an opposition, pursuant to Article 8(1)(b) of the EU Trade Mark Regulation (EUTMR) based on its earlier word mark “PANTA RHEI”, covering goods and services in Classes 3 (perfumery, essential oils, cosmetics, hair lotion, soap), 35 (‘advertising, business management, business administration, clerical services’) and 44 (‘hygienic and beauty care, and cosmetic treatment’).
In August 2019, the Opposition Division partially upheld the opposition in respect of the goods referred to the above. The Applicant appealed to the EUIPO Fourth Board of Appeal (the board) which subsequently dismissed the appeal.
The Applicant thus appealed to the General Court.
The General Court’s decision
The General Court first considered that, for the purposes of applying Article 8(1)(b) of the EUTMR, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar.
In relation to the relevant public, it was not disputed that the goods/services would be addressed both at the public at large and health and nutrition professionals. The level of attention of the relevant public should be considered as being at least average.
Comparison of the goods
In concluding that there was a low degree of similarity between the goods, the board had considered the intended purpose and common benefits of the goods, their complementary nature, and the coincidence in their distribution channels. The following analysis separately considers each of the Applicant’s goods in light of the factors identified by the board.
The Applicant had submitted that the pharmaceuticals covered by its mark (in Class 5) were defined more narrowly than the cosmetics covered by the Intervener’s mark. According to the General Court, the category of pharmaceuticals is a broad category which groups together goods whose intended purpose or benefits can be similar to those of cosmetics. For instance, pharmaceuticals can have both medical and cosmetic properties and therefore a medicated cream could have effects on the appearance of the skin by moisturising it or by soothing inflammation. Furthermore, given that there were numerous pharmacies, where the Applicant’s goods covered by the mark and those covered by the Intervener’s mark were sold, this also constituted a factor of similarity between the goods. The General Court therefore considered that the board had not erred in concluding that pharmaceuticals and cosmetics were similar to a low degree.
As regards dietetic food supplements for medicinal use and nutritional supplements covered by the Applicant’s mark, the General Court considered that, while the primary objective of the supplements in question is to balance nutritional deficiencies, their use could result in various effects on the appearance of the skin. The General Court therefore found that the board had been right to conclude that dietetic food supplements for medicinal use and nutritional supplements and cosmetics were similar to a low degree.
The General Court then considered that dietetic beverages for medical use have the effect of preventing or treating certain health problems. Those goods, like dietetic food supplements for medicinal use, could also have as their purpose the improvement of the physical appearance of their user. Furthermore, the cosmetics in Class 3 of the Intervener’s mark could also have the effect of improving the appearance of the body. The General Court therefore concluded that the board had correctly found that the goods were similar to a low degree.
The General Court agreed that such goods differed from cosmetics as regards their purpose, since the former constituted a very narrow category which could not be included in that of cosmetics. However, according to the EUIPO’s submission, the goods in those categories may ultimately have the same benefits, namely an improvement in physical appearance and health benefits.
The General Court considered that it was true that the purpose of non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases differs from that of cosmetics. Nevertheless, the fact that those goods are sold via the same distribution channels could constitute a factor of similarity unless those channels are non-specialist sales channels such as supermarkets or department stores, where very different kinds of goods could be found, so that consumers could not automatically believe that they have the same origin.
However, in the present case, the goods covered by the Applicant’s mark and the goods covered by the Intervener’s mark would be offered in pharmacies which, unlike supermarkets or department stores, do not offer such a variety of goods that consumers could not believe that the goods have the same origin. In that regard, the General Court also noted that the Applicant had not established that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases could not be displayed on the same shelves as cosmetics. In particular, the Applicant had failed to demonstrate that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases are medicines which could only be obtained with a prescription.
Therefore, although the goods differed as regards their purposes, the similarity of the distribution channels was such that the board had correctly concluded that non-alcoholic beverages adapted for the prevention and curative treatment of eye diseases and cosmetics were similar to a low degree.
The likelihood of confusion
The General Court considered that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (OHIM v Shaker (C‑334/05 P)).
The Applicant had submitted that there could be no likelihood of confusion because there was no similarity between the goods. In addition, the earlier mark had, at most, a weak distinctiveness given that the Intervener had not claimed that it would have enhanced distinctiveness.
The General Court considered that, according to the case law, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there could be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered.
The decision essentially confirms that a likelihood of confusion is justified when the signs are identical or highly similar, despite a low degree of similarity between the goods. The outcome depends on the particularities of each case. As a rule of thumb, when the degree of attention of the relevant public is average and the earlier trade mark has a normal distinctiveness, there will be a likelihood of confusion. However, the lower the relevance of one factor, the higher relevance of other factors must be in order to find a likelihood of confusion (bearing in mind that the likelihood of confusion is inversely affected by an increased degree of attention of the relevant public).
Importantly, it is not possible to establish in abstract whether one factor carries more weight than another, all factors will have varying degrees of relative importance depending on the circumstances.