Procter & Gamble Manufacturing Cologne v OHMI - Natura Cosmeticos (NATURAVIVA) (Intellectual property) [2011] EUECJ T-107/10 (29 September 2011)

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(Community trade mark – Opposition proceedings – Application for Community word mark NATURAVIVA – Earlier Community word mark VIVA – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009 – No similarity of the signs)

Procter & Gamble Manufacturing Cologne GmbH, established in Cologne (Germany), represented by K. Sandberg, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,

Natura Cosméticos, SA, established in São Paulo (Brazil), represented by C. Bercial Arias, lawyer,

1 On 5 January 2006, the intervener, Natura Cosméticos, SA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark in respect of which registration was applied for is the word sign NATURAVIVA.

3 The goods and services in respect of which registration was applied for are in Classes 3, 5 and 44 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 The application was published in Community Trade Marks Bulletin No 34/2006 of 21 August 2006.

5 On 13 November 2006, Mülhens GmbH & Co. KG filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).

8 In the course of the proceedings, the intervener requested Mülhens GmbH & Co. KG to furnish proof of use of the earlier German mark, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009). The evidence of use provided by the latter was considered insufficient, so that the opposition proceedings continued only on the basis of the earlier Community mark.

9 On 29 August 2008, the Opposition Division upheld the opposition and rejected the Community mark application in its entirety.

10 On 27 October 2008, the intervener filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.

11 By decision of 23 November 2009 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal. It considered that the visual and phonetic differences between the word mark NATURAVIVA applied for and the earlier word mark VIVA outweighed the similarities and that, conceptually, the signs were dissimilar in Member States where the words ‘natura’ and ‘viva’ are understood. Similarly, it observed that, conceptually, the sign NATURAVIVA would be perceived by the relevant public as a single and indivisible word and that the elements ‘natura’ and ‘viva’ had weak distinctive character in relation to body care products and beauty treatment. Therefore, the word ‘viva’ was not the dominant component of the mark applied for. Since the lack of similarity between the signs at issue could not be offset by the identity or the similarity of the goods and services in question, the Board of Appeal concluded that there was no likelihood of confusion between those signs.

12 By decision taken at the Mülhens GmbH & Co. KG general meeting of shareholders on 27 January 2010, that company changed its legal form and name to Procter & Gamble Manufacturing Cologne GmbH, who retain the status of applicant in the present case.

Admissibility of the documents submitted for the first time before the General Court

15 OHIM contends that Annexes A10 and A11 to the application, containing a list of marks owned by the intervener and printouts of its website, constitute new evidence that was not submitted in the proceedings before OHIM, so that those documents are not admissible.

16 It is settled case-law that the purpose of actions for annulment brought before the Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so that it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Facts which are pleaded before the Court without having previously been produced before the adjudicating bodies of OHIM can only affect the legality of such a decision if OHIM should have taken them into account of its own motion (Case T-�115/03 Samar v OHIM – Grotto (GAS STATION) [2004] ECR II-�2939, paragraph 13, and Case T-�346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-�4891, paragraph 19).

17 In the present case, Annexes A10 and A11 to the application were produced for the first time before the Court. They must, consequently, be held to be inadmissible and should be excluded from the proceedings, there being no need to assess their probative value (see ARTHUR ET FELICIE, paragraph 19 and the case-law cited).

18 The applicant relies on a single plea in law in support of its action, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier mark, the mark applied for must not be registered if, because of its identity with or similarity to an earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

20 It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods or services in question, and with account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services concerned (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

21 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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. Those conditions are cumulative (see Case T-�316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

22 Where the protection of the earlier mark extends to the entirety of the Community, it is necessary to take into account the perception of the marks at issue by the consumer of the goods and services in question in that territory. However, it should be noted that, for a Community trade mark to be refused registration, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part only of the Community (see, to that effect, Joined Cases T-�81/03, T-�82/03 and T-�103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-�5409, paragraph 76 and the case-law cited).

23 In the present case, the applicant disputes the contested decision as regards the similarity of the signs at issue, that is, the earlier Community word mark VIVA and the word mark applied for NATURAVIVA.

24 By contrast, the applicant does not dispute that, in the context of consideration of the likelihood of confusion, firstly, the goods and services at issue, which relate in essence to general hygiene products, cosmetics and body care services, are similar or even identical and secondly, the relevant public is composed of average consumers in the European Union, the territory in which the earlier sign enjoys protection. Similarly, the applicant does not dispute the Board of Appeal’s finding that, given the importance they attach to their own physical well-being, hygiene and appearance, consumers of such products and services will tend to pay more attention to their purchase than they would to common everyday goods (paragraph 22 of the contested decision).

25 In that regard, it should be recalled that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression they produce, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-�334/05 P OHIM v Shaker [2007] ECR I-�4529, paragraph 35 and the case-law cited).

26 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-�4335, paragraph 30, and judgment of 10 September 2008 in Case T-�325/06 Boston Scientific v OHIM – Terumo (CAPIO, not published in the ECR, paragraph 89).

27 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (see OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-�193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, paragraph 43).

28 In accordance with the case-law, when assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (MATRATZEN, paragraph 35).

29 It is in the light of those rules that it must be examined whether there is a similarity between the word mark applied for NATURAVIVA and the earlier word mark VIVA.

30 In the present case, the Board of Appeal held that the signs at issue were visually, phonetically and conceptually dissimilar. It observed, first, that the mark applied for was longer than the earlier mark, second, that the common element ‘viva’ came at the end of the mark applied for and, therefore, consumers would pay less attention to it and it would be sounded less emphatically and, lastly, that the signs at issue had a different meaning for part of the relevant public, whereas for the rest of the public they would have no meaning, so that there could be no conceptual comparison (paragraphs 24 to 29 of the contested decision).

31 The Board of Appeal also argued that the sign NATURAVIVA appeared as a single and indivisible word and that the element ‘viva’ could not be the dominant component of the mark applied for, in so far as it alluded to health and well-being, so that its distinctive character was as weak as that of the element ‘natura’ (paragraphs 32 and 33 of the contested decision).

32 On the other hand, the applicant observes that the differences between the signs at issue are not relevant in so far as the element ‘viva’ will be perceived either as the dominant element in the mark or as an element playing an independent distinctive role within a sign that comprises two elements. It considers that the element ‘natura’ has only a weak distinctive character inasmuch as it is descriptive in respect of the goods designated by the mark applied for. Consequently, consumers will dismiss the element ‘natura’ of the mark applied for and only retain the element ‘viva’ to designate the goods in question, itself identical to the earlier mark VIVA. This could lead the consumer to think that the products carrying the marks VIVA and NATURAVIVA derive from the same company or from companies which are linked economically.

33 Furthermore, the applicant claims that, even if the element ‘viva’ could not be considered to be the dominant element of the mark applied for, it nevertheless retains an independent distinctive position within the sign NATURAVIVA in so far as the consumer can distinguish between the element ‘natura’, as a component of the company name of the mark owner, namely Natura Cosméticos, and the verbal element which coincides with the earlier mark ‘viva’.

34 It must be stated, first, that the mark applied for is composed of a single element, namely the word ‘naturaviva’, created by the juxtaposition of the terms ‘natura’ and ‘viva’. The word ‘viva’ is thus one of two elements that constitute the mark applied for NATURAVIVA and is the only element that constitutes the earlier mark VIVA.

35 The term ‘natura’ is a Latin word meaning ‘nature’, which also exists in Spanish, Portuguese and Italian, and has close equivalents in French, English (nature) and German (Natur). It should be observed here that, contrary to what was stated by the Board of Appeal in paragraph 27 of the contested decision, the word ‘natura’ has a precise meaning in Spanish. The Diccionario de la lengua española de la Real Academia Española (Dictionary of the Spanish Language of the Royal Spanish Academy) defines the word ‘natura’ as a word derived from Latin whose first meaning is ‘naturaleza’, that is to say nature.

36 The term ‘viva’ is a word derived from Latin meaning ‘alive’ or ‘living’, or ‘long live…!’. The two meanings exist in Spanish and Portuguese, only the second meaning exists in Italian and English, but close equivalents exist in Italian for the first meaning and in French for both meanings.

37 In view of the place that it occupies in relation to the element ‘natura’, the element ‘viva’ will not be perceived by consumers who understand its meaning as the exclamation ‘long live…!’, since, in that case, it would have to be placed before the noun. It will rather be perceived as an adjective which, placed after the noun ‘natura’, qualifies it.

38 Therefore, the sign NATURAVIVA will be understood, at least by Spanish and Portuguese consumers, but also by Italian and French consumers, on account of the proximity of the terms ‘natura’ and viva’ and their equivalents in French and Italian, as one logical unit meaning ‘living nature’ or ‘alive nature’. The rest of the relevant public will perceive the sign as being composed of a single element, which either refers to the notion of nature, on account of the similarities between the term ‘natura’ and its equivalent in the different languages of that public, or has no clear or precise meaning, as an invented word. The fact that there is no separation of the two words helps to reinforce that unitary perception.

39 That the word ‘natura’ could, according to the applicant, be considered to be allusive, and therefore as having only weak distinctive character, cannot be of relevance in the present case.

40 The word ‘natura’ is not the only word that could be considered to be of weak distinctive character, on account of its allusive character, with regard to the goods and services in question. The word ‘viva’, as a qualifying adjective meaning ‘living’ or ‘alive’, and the compound formed by the juxtaposition of the words ‘natura’ and ‘viva,’ are also allusive or evocative in respect of the goods and services in question.

41 Having regard to the goods and services designated by the mark applied for, that is, in essence, general hygiene products, cosmetics and body care services, the qualifying adjective ‘viva’ is likely to be understood, by Spanish, Portuguese, French and Italian consumers, as well as those who speak those languages, as evoking something that is full of life, so that it conveys the idea of vitality of skin, body, hair and even of the mind. The meaning of the compound formed by the juxtaposition of ‘natura’ and ‘viva’ will not be unlike the separate meanings of each of the words taken separately and the compound will itself be understood by those consumers as evoking that which is natural or ecological and, at the same time, full of life and, therefore, capable of restoring vitality to skin, body, hair and mind.

42 In the light of the foregoing, the two words that constitute the mark applied for have a weak distinctive character and, contrary to what the applicant claims, therefore have the same degree of importance in the eyes of the relevant public, without it being possible to regard either as insignificant. For a large part of the relevant public, the two joined words form a logical unit meaning ‘live nature’ or ‘living nature’, whereas the rest of the relevant public will perceive the mark applied for as a single invented word or, at the very most, a reference to nature. There is therefore no reason, contrary to what the applicant maintains, to exclude the word ‘natura’ from the overall impression generated by the sign NATURAVIVA and to consider the word ‘viva’ to be the dominant element of that sign (see, to that effect, Case T-�22/04 Reemark v OHIM – Bluenet (Westlife) [2005] ECR II-�1559, paragraph 36).

43 As regards the applicant’s argument that the word ‘viva’ has an independent distinctive position within the mark applied for, it should be underlined that, even if the element ‘natura’ is a component of the company name of the intervener and used by the intervener in other marks, the element ‘viva’ will be perceived, as mentioned in paragraph 37 above, by a large part of the relevant public as a qualifying adjective accompanying the noun ‘natura’ and thus forming, with that noun, the logical unit ‘naturaviva’. For that reason, it cannot be perceived as having an independent distinctive position within the mark applied for (see, to that effect, Case C-�120/04 Medion [2005] ECR I-�8551, paragraph 37).

44 Having established that the word ‘viva’ is neither the dominant element of the mark applied for nor an element that has an independent distinctive position within it, it must be examined whether there are similarities between the signs at issue.

45 The applicant concedes that the signs at issue are only identical as regards the word ‘viva’, whereas they are different ‘in so far as [the mark applied for] has the additional mark component [“natura”] which creates a dissimilarity in length between the marks if one compares them aurally or visually with each other as a whole’.

46 Even if, visually and aurally, the word ‘viva’ is in both signs at issue, they are, however, significantly different.

47 Visually, as the Board of Appeal pointed out in paragraph 24 of the contested decision, the mark applied for NATURAVIVA is longer than the earlier mark VIVA and the beginning of the mark applied for is different to that of the earlier mark. Furthermore, due to its position at the beginning of the mark applied for, the element ‘natura’ is likely to have a greater impact than the rest of the mark applied for and thus to create a significant difference as regards the overall impression created by the earlier mark (see, to that effect, Joined Cases T-�183/02 and T-�184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-�965, paragraph 81, and Case T-�112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-�949, paragraph 64).

48 The applicant’s argument that, in the present case, the consumer will not attach greater importance to the first part of the mark applied for, on account of its weak distinctive character, is immaterial. In so far as the elements ‘natura’ and ‘viva’, which together constitute the mark applied for, are of weak distinctive character, as mentioned in paragraphs 40 and 41 above, the case-law cited by the applicant does not apply to the present case.

49 Phonetically, as the Board of Appeal stated in paragraph 25 of the contested decision, the mark applied for consists of five syllables ‘na’, ‘tu’, ‘ra’, ‘vi’ and ‘va’, whereas the earlier mark is only made up of two syllables ‘vi’ and ‘va’. Those two syllables are, indeed, the same as the last two syllables in the mark applied for. Nevertheless, the first three syllables of the mark applied for, to which the consumer’s attention is normally drawn, are different (see, to that effect, MUNDICOR, paragraph 83). Similarly, the relevant public will have a tendency to sound the beginning of the mark applied for more emphatically than the end, and thereby emphasise the differences between the two signs. It must therefore be considered that the signs at issue display different phonetic sequences.

50 Conceptually, as has been noted in paragraph 38 above, the signs at issue are clearly different for those of the relevant public who understand their meaning, whereas, for the rest of the public, a conceptual comparison of the signs is irrelevant as they do not have a clear and precise meaning.

51 In the light of the foregoing, it must be concluded that the Board of Appeal rightly held, in paragraph 30 of the contested decision, that the signs NATURAVIVA and VIVA are different.

52 With regard to the global assessment of the likelihood of confusion, it implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between these goods or services may be offset by a high degree of similarity between the marks, and vice versa (VENADO with frame and Others, paragraph 74, and see, by analogy, Case C-�39/97 Canon [1998] ECR I-�5507, paragraph 17).

53 In the present case, it was found, first, that the goods and services in question were similar or even identical (see paragraph 24 above), and, secondly, that the signs at issue were different visually, different phonetically for the section of the relevant public for whom those signs did not have a clear and precise meaning, and different conceptually for the section of the relevant public that understood their meaning (see paragraphs 46, 50 and 51 above).

54 The Board of Appeal observed, in paragraph 35 of the contested decision, that the identity of the goods and services in question could not outweigh the lack of similarity between the signs at issue, and therefore concluded that there was no likelihood of confusion.

55 Indeed, in accordance with settled case-law, the lack of similarity between the signs at issue cannot be outweighed, in the context of the global assessment of the likelihood of confusion, by the fact that some of the goods designated are identical and that they belong to the same sector of production and marketing, since the identity of the goods does not suffice for there to be a likelihood of confusion (see, to that effect, Case T-�423/04 Bunker & BKR v OHIM – Marine Stock (B.K.R.) [2005] ECR II-�4035, paragraph 76, and judgment of 13 June 2007 in Case T-�167/05 Grether v OHIM – Crisgo (Thailand) (FENNEL), not published in the ECR, paragraph 74).

56 In the light of all the foregoing, it is apparent that the Board of Appeal did not err in finding that, in the present case, there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Therefore, since the single plea in law relied upon by the applicant is unfounded, the action must be dismissed in its entirety.

57 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Procter & Gamble Manufacturing Cologne v OHMI - Natura Cosmeticos (NATURAVIVA) (Intellectual property) [2011] EUECJ T-107/10 (29 September 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T10710.html Cite as: [2011] EUECJ T-107/10

Court of Justice of the European Communities (including Court of First Instance Decisions)