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News blog7 December 2022European Innovation Council and SMEs Executive Agency3 min read

“Naturkaps – Naturcaps” and “Las Cebras – Lezebra”

NATURKAPS - NATURCAPS (T‑12/22)

In 2019, the Polish company Hasco TM filed an application for a declaration of invalidity against the European Union Trade Mark “NATURCAPS”, which was registered for goods in class 5 of the Nice Agreement, inter alia for “Tonics [medicines]; Dietary and nutritional supplements; Dietary supplements and dietetic preparations; Nutritional supplements…”.

The application was based on the earlier national Polish word mark “NATURKAPS”, which covered “Pharmaceutical products” in class 5. 

The Cancellation Division of the EUIPO rejected the invalidity request and a subsequent appeal was dismissed by the Boards of Appeal (BoA), on the grounds that, albeit the evidences submitted by the owner of the earlier trade mark to prove genuine use, the trade mark was applied to food supplements rather than to “pharmaceutical products”. In other words, the BoA stated that the trade mark “NATURKAPS” was registered for “pharmaceutical products”, but the genuine use had been demonstrated for food supplements, which was a different indication in the same class (dietetic substances).

The Polish company lodged an appeal before the General Court (GC), claiming that the term “pharmaceutical products” was a generic term, covering medicinal products and food supplements. 

The GC found that the goods marketed by the applicant corresponded to food supplements that were sold in pharmacies. In this sense, Class 5 of the Nice Classification clearly distinguished between “pharmaceutical products”, i.e., products sold in pharmacies, and “dietetic substances adapted for medical use” which included food supplements. The Court therefore considered that the evidences adduced, rather than showing genuine use for ”pharmaceutical products” for which the trade mark was registered, they demonstrated use for “dietetic substances”. 

The GC dismissed the appeal on the grounds that genuine use had not been proved by the owner of the earlier trade mark “NATURKAPS”, for the goods for which the trade mark was registered. As a consequence, the later trade mark could not be used as a basis for a declaration of invalidity request. 

 

LAS CEBRAS – LEZEBRA (T-159/22)

In 2019, the company Sanetview sought to register as a European Union Trade Mark (EUTM) the figurative sign “LAS CEBRAS” designating services in Class 43 of the Nice Classification, namely “Temporary accommodation; Hotels, hostels and boarding houses, holiday and tourist accommodation; Provision of food and drink; Restaurant services”. 

An opposition was filed against the registration of the sought trade mark, based on the earlier figurative Spanish trade mark “LEZEBRA”, designating services in class 43 (including Restaurant services; Temporary accommodation). 

The grounds on which the opposition was based were those referred to in article 8.1.b) of the European Union Trade Mark Regulation (EUTMR), namely likelihood of confusion among the general public. 

The Opposition Division of the EUIPO and at a later stage the Boards of Appeal (BoA), upheld the opposition arguing that there was likelihood of confusion, for the purpose of applying article 8.1.b) EUTMR, considering that the relevant public - especially from Spain - could perceive that those similar marks applied to identical services, have the same commercial origin. 

The applicant lodged an appeal before the General Court (GC), arguing that the BoA erred in assessing the likelihood of confusion. 

As regards the similarity of the marks, the GC pointed out that “the comparison of the signs must be based upon the overall impression produced by the signs, bearing in mind, in particular, their distinctive and dominant elements”. In this case, outcome of the comparison was at follows: 

-        Visual: The Court held that both signs had in common the figurative element of a zebra and the word elements «e», «b», «r» y «a». Even though, the word elements had different stylisation. Therefore, the Court considered that the contested signs had a degree of visual similarity slightly below average.

-        Phonetical: Both signs coincide in the sound of the medium and last syllable. Hence, the pronunciation will differ in the first syllable, meaning that they could be considered similar to an average degree.

-        Conceptual: The Court considered that conceptually the signs were similar to a high degree, since both referred to a zebra. 

Therefore, the overall assessment of the likelihood of confusion showed that the services at issue were identical and furthermore the signs showed a high and average degree of similarity, at least at phonetical and conceptual level. 

Consequently, the GC dismissed the appeal and confirmed that there was likelihood of confusion between the sought figurative sign “LAS CEBRAS” and the earlier mark “LEZEBRA”, within the meaning of article 8.1.b) EUTMR.  

 

Details

Publication date
7 December 2022
Author
European Innovation Council and SMEs Executive Agency