judge
13 July 2015Trademarks

European court upholds Nanu-Nana CTM rejection

The European General Court has dismissed German retailer Nanu-Nana’s appeal against a decision by the Office for Harmonization in the Internal Market (OHIM) to partly reject one of its Community trademark (CTM) applications.

The case concerned the retailer’s CTM application for the word mark ‘Nanu’.

Nanu-Nana’s application, filed in August 2007, was opposed by Vincci Hoteles, a Spanish hotel chain. Vincci had registered a CTM covering the word mark ‘Nammu’ just one month before Nanu-Nana filed its application.

Vincci’s ‘Nammu’ mark covers laundry services, alcoholic and non-alcoholic beverages, and medical services.

In 2010, OHIM’s Opposition Division upheld Vincci’s challenge.

Later that year, Nanu-Nana appealed against the decision. OHIM’s First Board of Appeal then approved Nanu-Nana’s application to cover candles and toilet utensils, but blocked it from protecting cosmetics, toothbrushes and retail services, arguing it would cause a “likelihood of confusion” with the ‘Nammu’ mark.

Nanu-Nana appealed against the decision to the general court but the case was stayed in 2013 as Nanu-Nana was proceeding with a separate legal action at the court to invalidate Vincci’s ‘Nammu’ CTM. Last December, the court rejected Nanu-Nana’s invalidation claim.

On Thursday, July 9, the general court again ruled against Nanu-Nana, rejecting its CTM application covering cosmetics, toothbrushes and retail services.

Nanu-Nana argued that the marks are “visually dissimilar” because both words cover a different number of letters and the “middle parts of the signs at issue, emphasised by the doubling of the letter ‘m’ in one of the signs, contribute to the lack of visual similarity”.

But the court argued that this was not “sufficient to cancel out the similarity”, saying that the “slight differences in their middle sections, such as the present case, will not attract the consumer’s attention any more than the parts beginning and end of the signs”.

Neither Axel Nordemann, partner at law firm Boehmert & Boehmert and representing Nanu-Nana nor Vincci Hoteles had responded to a request for comment at the time of publication, but we will update the story should they get in touch.

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