Emsibeth's Trade Mark Opposition appeal dismissed by the General Court

A recent decision in the General Court of the European Union (Seventh Chamber) (the "General Court") dismissed an appeal brought against the decision of the Board of Appeal by the appellant Emsibeth SpA.

Background

Peek & Cloppenburg KG, the proprietors of an earlier community trade mark ("CTM") for 'Mc Neal' in relation to class 3: soap, perfumery, essential oils, cosmetics and hair lotions, opposed the CTM application from Emsibeth SpA for the mark 'Nael' in relation to class 3: soap, perfumery, essential oils, cosmetics, colouring and hair bleaching products, shampoos and hair lotions.

In the first instance, the Opposition Division rejected the opposition in full, only for this to be overturned by Second Board of Appeal, thereby resulting in the present application by Emsibeth to the General Court to set aside the decision by Second Board of Appeal.  It also sought an order for costs.

Appeal to the General Court

In dismissing the appeal, the General Court paid particular attention to the issue of confusion in relation to the relevant public in distinguishing between the two marks.

The General Court disagreed with the Second Board of Appeal with regard to visual similarity. It was held that only an average degree of visual similarity existed between the two marks, whereas the Board of Appeal had held that a great visual similarity existed. The distinction was drawn from the stylised 'L', the darkness of the font used prefix 'Mc' of the earlier mark between the two marks.

It was also held that the two marks had a low level of phonetic and conceptual similarity, the latter referencing the meaning of the word in English, French and Estonian.

In assessing the overall matter of confusion, the Second Board of Appeal found the two products and the goods therein to be identical or very similar. As the relevant public is deemed as the average consumer with an 'average' level of attentiveness when choosing consumables, an average degree of visual similarity would be sufficient to cause the relevant public to conceivably mistakenly believe that the word 'Nael' and the word 'McNeal' are two products from the same commercial enterprise.