How weak is a trademark with a low distinctive element?

The General Court of the European Union has ruled in case T–602/19  Eugène Perma Franc v SPI Investments Group.

This case shows the risks when you want your trademark to include common, low distinctive words.

In the case at hand, Eugène Perma Franc applied for the following European trademark for Class 3 – Cosmetics and hair lotions:

Against this application an opposition was filed by SPI Investments Group based on an earlier trademark for the same class:

The EUIPO ruled that both signs are similar to average degree for identical goods and upheld the opposition.

In the appeal, the Board of appeal confirmed this decision stating that although NATURA has a weak distinctiveness, from visual and phonetic point of view the signs are similar for identical goods.

The decision was appealed again.

The General Court, however, disagreed with the EUIPO’s position.

According to the Court, the first part of the signs NATURA, which constitutes 60% of the marks, is a low distinctive element that is used by many companies in relation with cosmetics. Taking into account this, the end of the words “_NOVE” и “_LIUM” being completely different, create an independent impression which overcome the possibility for confusion even in the case of identical goods.

According to the court: “it is clear from the decision-making practice of the Boards of Appeal of EUIPO and the case-law of the Court that, although a company is free to choose a trade mark with a low degree of distinctiveness and use it on the market, it must accept, however in doing so, that competitors are equally entitled to use trademarks with similar or identical descriptive components”.

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