The EU General Court has sided with the European Union Intellectual Property Office (EUIPO) in a decision to dismiss a trademark appeal filed by retail and wholesale organisation Metro Group.

In August 2011, Germany-based MIP Metro Group Intellectual Property applied for an international word mark designating the EU for ‘N & NF Trading’ in classes 35 and 39, covering advertisement and business management, transport, and wrapping of goods.

France’s national standardisation organisation Association Française de Normalisation opposed the application in May 2012 based on several earlier rights. In particular, it opposed the application based on an EU figurative mark that was applied for in February 2011 and registered in November 2011.

The mark, which was registered in classes 35 and 39, is made up of a blue and green oval with the letters ‘NF’ above the word ‘Environment’ in white.

The Opposition Division of the EUIPO upheld the opposition in June 2015 on the basis that there was a likelihood of confusion.

This decision was supported by the First Board of Appeal of the EUIPO, which found that the components ‘NF’ and ‘N & NF’ were distinctive and dominant components of the signs at issue. It also claimed that the marks had visual and phonetic similarities with no conceptual difference and that the services covered by the marks were identical.

MIP Metro argued that the Board of Appeal was wrong in finding ‘NF’ in the earlier mark as the sole dominant component and said that it had failed to take into account the component ‘Environment’.

MIP Metro also made the argument that the earlier sign is used in France as a label of quality and not the services it is registered under. Therefore, the earlier mark cannot be regarded as having “enhanced distinctiveness”.

The General Court said that MIP Metro is justified in this argument in respect of the French public.

MIP Metro argued that, contrary to what the Board of the Appeal found, the component ‘NF’ in its applied-for mark does not retain an independent distinctive role.

To support its claim, MIP Metro said that the component ‘NF’ cannot acquire such a role as it does not correspond to either the trade name or to the “mark identifying the company of the proprietor of the earlier mark, or to a series of marks of the latter”.

It also said that the component ‘N & NF’ in the earlier mark suggests that the services offered come from a single entity.

The General Court rejected this argument, and said that the relevant public may believe that the services provided under the marks come from economically linked entities, resulting in a likelihood of confusion among the relevant public.

MIP Metro’s appeal was dismissed and it was ordered to pay the costs.

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