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On the qualification as “normal” of the degree of distinctive character inherent in an earlier mark

EU General Court, Judgment 05/10/2020, case T-602/19

date: 19.10.2020
Area: Intellectual Property

In the judgment delivered on 5 October 2020, the EU General Court had the opportunity to dwell on the question of qualifying as “normal” the degree of intrinsic distinctiveness of an earlier mark to assess the existence of the likelihood of confusion between two signs.

The Court’s intervention was requested after the Fourth Board of Appeal of the EUIPO, called to rule on the dispute, had considered that the signs in conflict were visually and phonetically similar, as well as devoid of any conceptual meaning. In particular, it stated that the main linguistic component in common between the signs (the term “nature”) had a weakly distinctive semantic scope. With regards to the earlier mark, it considered that, taken as a whole, despite the presence of a weakly distinctive linguistic element, the mark had a “normal degree of inherent distinctiveness”. Consequently, the Board, taking into account, on the one hand, the principle of interdependence and overall similarity of the signs and identity of the goods and, on the other hand, the normal degree of distinctiveness of the earlier mark, concluded that there was likelihood of confusion between the signs, considering it likely that a significant part of the public in the EU, even if careful, could be led to believe that the goods came from the same or economically connected undertakings.

Having found the degree of similarity between the two signs in question to be low both visually and phonetically and conceptually, the General Court pointed out that the term “normal” used by EUIPO with reference to the degree of inherent distinctiveness of an earlier mark is particularly ambiguous, since the minimum distinctiveness available for any mark can be modulated in its intensity according to the degree of distinctiveness of the mark in question. In the present case, therefore, the General Court held that, if by virtue of its mere registration the earlier mark had a minimum intrinsic distinctiveness, this does not exclude that it is in any case weak. This means that, taken as a whole, the earlier mark has a low inherent distinctiveness. Based on this reasoning, therefore, the EU General Court annulled the contested decision and disallowed the existence of a likelihood of confusion.

On the qualification as “normal” of the degree of distinctive character inherent in an earlier mark

EU General Court, Judgment 05/10/2020, case T-602/19

date: 19.10.2020
Area: Intellectual Property

In the judgment delivered on 5 October 2020, the EU General Court had the opportunity to dwell on the question of qualifying as “normal” the degree of intrinsic distinctiveness of an earlier mark to assess the existence of the likelihood of confusion between two signs.

The Court’s intervention was requested after the Fourth Board of Appeal of the EUIPO, called to rule on the dispute, had considered that the signs in conflict were visually and phonetically similar, as well as devoid of any conceptual meaning. In particular, it stated that the main linguistic component in common between the signs (the term “nature”) had a weakly distinctive semantic scope. With regards to the earlier mark, it considered that, taken as a whole, despite the presence of a weakly distinctive linguistic element, the mark had a “normal degree of inherent distinctiveness”. Consequently, the Board, taking into account, on the one hand, the principle of interdependence and overall similarity of the signs and identity of the goods and, on the other hand, the normal degree of distinctiveness of the earlier mark, concluded that there was likelihood of confusion between the signs, considering it likely that a significant part of the public in the EU, even if careful, could be led to believe that the goods came from the same or economically connected undertakings.

Having found the degree of similarity between the two signs in question to be low both visually and phonetically and conceptually, the General Court pointed out that the term “normal” used by EUIPO with reference to the degree of inherent distinctiveness of an earlier mark is particularly ambiguous, since the minimum distinctiveness available for any mark can be modulated in its intensity according to the degree of distinctiveness of the mark in question. In the present case, therefore, the General Court held that, if by virtue of its mere registration the earlier mark had a minimum intrinsic distinctiveness, this does not exclude that it is in any case weak. This means that, taken as a whole, the earlier mark has a low inherent distinctiveness. Based on this reasoning, therefore, the EU General Court annulled the contested decision and disallowed the existence of a likelihood of confusion.