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FRIDAY, 10 APRIL 2015
General Court: Nael (fig) v McNeal

In Case T-596/13, the General Court dismissed the appeal in the following opposition :

Emsibeth SpA-contested CTM

Peek & Cloppenburg KG – earlier CTM

Image not found

Mc Neal

Class 3 : soap; perfumery,
essential oils, cosmetics;
coloring  and hair bleaching products;
shampoos; hair lotions

 

Class 3: soap; perfumery,
essential oils, cosmetics ;
hair lotions

 

The Opposition Division had rejected the opposition in its entirety, however the Second Board of Appeal annulled the OD's decision and upheld the opposition.

The relevant public consists of average consumers in the EU with a normal level of attention when purchasing the goods in question. The goods in question are either identical or very similar to some others.

 Regarding the comparison of the signs :

1) The GC disagreed with the visual assessment of the BoA and found that the contested CTM contains graphic elements as stylized letters , and the letter "l" stands out in the form of a leaf. This letter is also darker than the other letters of the mark applied . Admittedly, these graphic differences are minimal, but they are not negligible from a visual point of view . Hence the word ' mc ' of the earlier mark and the graphic elements of the mark reduce the visual similarity between the marks . Therefore, the conflicting marks do not have a « great visual similarity » but only have an average degree of visual similarity .

2) As regards the phonetic comparison of the signs in question, the contested mark will be normally pronounced 'naelle "in English and in other languages ​​spoken by the relevant public. In addition, the mark can also be pronounced "Nel" in Danish, German, Dutch and Swedish. The earlier mark is pronounced 'mac nile "in English and" mac -né- ale "in other languages ​​spoken by the relevant public. However, although the relevant public knowing English pronounce the word 'mc " as " mac ", it is far from certain that the rest of the relevant public will do it the same way, since there is no equivalent word in other languages. Indeed, given the length of the word "neal" and the difficulty to understand and pronounce the word "mc", the non-English speaking relevant public might even have trouble remembering the "mc" element. In any event, even if the consumer did not ignore the word 'mc' in the earlier mark, there is a similar pronunciation in languages ​​other than English, such as German, Spanish and French, as found by the Board of Appeal. Accordingly, the marks have low phonetic similarity.

3)Conceptually wise, the word " nael " is a very rare male name in France and this word means " nail" in Estonian. The words " mc neal " are understood as a Scottish surname by the relevant English-speaking public. The result is that only people who know Estonian and English, or French and English, will make a conceptual comparison of the marks and that they will not, for those people who are not a significant part of the relevant public, similar conceptually . For the vast majority of that public , the marks are of no significance. Therefore there is no need for a conceptual comparison which would have no effect on the overall assessment.

At the global assessment of likelihood of confusion, the Board of Appeal noted that the word 'neal "occupied an independent distinctive role within the earlier mark and that element "nael " of the contested sign asked was similar. Further the products in question are identical or very similar, and it must be taken into consideration that this type of product is generally presented in supermarkets shelves and customers can choose the goods themselves- even if it is true that some of the products in question as ' hair dyes and bleach " are also purchased by professionals such as hairdressers and can also be sold in hair salons where consumers may be assisted by the sellers. However, if an oral presentation on the product and the brand is not excluded, the visual perception of the marks normally takes place before the actual purchase . The visual aspect is, therefore, more important in the overall assessment of the likelihood of confusion.



Given the average visual and low phonetic similarities and identical or similar products, there is a risk of confusion between the marks in question. The Board of Appeal added that the relevant public would perceive the two signs as belonging to the same family of brands because of the word 'mc' of the earlier mark and the fact that consumers will pay no attention to the inbersion of letters "a" and "e". Indeed, the Board of Appeal held that "mc neal" could be perceived as a stylized version and an extension of Nael brand products, or vice versa.


Posted by: Laetitia Lagarde @ 04.51
Tags: General Court, likelihood of confusion, nael, Mc neal, beauty products,
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