Tuesday, 25 June 2013

General Court thinks NICORONO is too similar to NICORETTE (and who can argue?)

Case T-580/11, McNeil AB v OHIM, involved an application to register the word mark NICORONO as a CTM, for aids to help smokers stop. In opposition proceedings, the Board of Appeal had decided that there was no likelihood of confusion although the goods were identical. The Court found (agreeing on this with the BoA) that the relevant public was professionals and consumers, and that the consumers involved, given that their health was at stake (should they have taken judicial notice of the fact that so many are in denial about this, I wonder?) would be particularly attentive.

The Court also agreed with the BoA that the "NICO" part of the mark, although not descriptive, as "highly evocative" of a characteristic of the goods and therefore only weakly distinctive. (To some of us, the name is highly evocative of the late Christa Päffgen, or even of Mr Ladenis and his excellent restaurants, but that's another matter, although I suppose it does go to the suitability of the word for trade mark purposes.) Where the Court differed from the Board was in its assessment of the power of the first four letters of the trade mark to attract the attention of the relevant public. Its length and leading position meant that it would do so as much as the "RONO" or "RETTE" part (and perhaps it is also worth noting that it's actually the first five letters that the marks have in common, although it's certainly the NICO element that carries the meaning). The similarities outweighed the differences, and visually, phonetically and conceptually the marks were similar. Which demonstrates the dangers of incorporating descriptive elements into your trade mark - taking the lazy route to creating a trade mark, perhaps, or trying to convey information about what the goods do not just who makes them.

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