In Case T‑491/13, the General Court dismissed the appeal in the following action reminding that registered marks which contain a descriptive word cannot be easily enforced as prior rights, even where combined with a more distinctive element.

The Board of Appeal found that the word element ‘pure’ featuring in all the marks at issue was perceived by a part of the relevant public,  in particular by consumers in English-, French-, Italian-, German-, Dutch-, Portuguese-, Spanish- and Romanian-speaking areas, as being a reference to the freshness or purity of the goods sold and, therefore, as a mere description of those goods. As OHIM has noted, the word suggests that the products which it describes are fresh, natural or healthy. That reasoning applies to any product characterised by a particular taste or flavour. For mints, in particular, that term refers to the lack of artificial additives and colourings, to fresh breath and to the purity of those sweets with mint flavour alone, distinct, for example, from sweets with mint and lemon flavour. The opponent itself acknowledged that it has created brands using the element ‘pure’ as that term conveyed the idea of deep freshness.

For the other consumers who do not understand the meaning of the word ‘pure’ it has an average level of distinctiveness.

The element ‘trident’ is more distinctive and dominant element for consumers who understand the word ‘pure’. For those who do not, the elements ‘pure’ and ‘trident’ are equally distinctive, the latter element nevertheless being dominant because of its initial position in the mark applied for. The distinctiveness of the mark applied for is, at most, normal.

The goods are identical.

As regards the comparison with CTM No 9291634, in the global assessment of the likelihood of confusion, there is no likelihood even for consumers who did not understand the word ‘pure’, taking the view that the intrinsic distinctiveness of the earlier mark was not above average and that the visual similarity had special significance owing to the fact that the goods at issue were bought on sight. In addition, the applicant had not demonstrated to the requisite legal standard that the earlier trade mark possessed enhanced distinctiveness on account of its use or that there was a family of trade marks based on the element ‘pure’.

Regarding the comparison with CTM No 6771869, for that part of the relevant public, the distinctive character of the earlier mark lay purely in its graphic design and was only very low. The same was true of those consumers who understood the word ‘pure’, but not the word ‘white’, since ‘white’ was the most distinctive and dominant element of the earlier mark for that category of the relevant public. Lastly, for consumers who understood neither ‘pure’ nor ‘white’, those marks were visually similar to a low degree, phonetically similar to an average degree and conceptually neutral.  For the purposes of the global assessment of the likelihood of confusion, the BoA essentially referred to the considerations set out in the comparison with CTM  No 9291634 and concluded that there was no such likelihood for any category of consumers examined.

As regards the comparison between the mark applied for and French word mark No 63431610, PURE FRESH, the French consumer would perceive the word ‘pure’ as a description of the goods at issue and those marks were, at most, visually and phonetically similar to a low degree, whereas the element ‘pure’ was not relevant for the purposes of the conceptual comparison. Taking into account the fact that the distinctiveness of the earlier mark ranged from very low to average, depending on whether the consumer understood the word ‘fresh’, and referring to its earlier reasoning, the BoA concluded that there was no likelihood of confusion.

With regard to the comparison with CTM No 8813487, Italian figurative mark No 1280532 and Benelux mark No 864652, the Board of Appeal referred to its earlier reasoning while pointing out that, in those earlier marks, the element ‘mentos’ was the most distinctive and dominant element, which rendered the degree of similarity between those marks and the mark applied for even lower, if not non-existent, in relation to the other marks examined.

Lastly, the Board of Appeal observed that the existence of IR No 932886 and of Benelux trade mark No 820421 had not been proved by the applicant and that, consequently, the opposition based on those marks had to be rejected under Rule 20 of that regulation. For the sake of completeness, for the reasons already set out in the other comparisons, there was no likelihood of confusion between those marks and the mark applied for.

Last but not least, the opponent has provided no evidence capable of proving that the umbrella brand MENTOS was widely known by the relevant public. Even on the assumption that it has been proved that the element ‘mentos’ was readily known by the relevant public, that element is not, for that reason, less important for the purposes of the comparison of the signs at issue. On the contrary, a widely-known word element incorporated in a composite mark is particularly appropriate for indicating the commercial origin of the goods sold under that mark, for which reason it is impossible to regard such an element as ancillary, or even as negligible.