Case T-580/08

PJ Hungary Szolgáltató kft (PJ Hungary kft)

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for Community word mark PEPEQUILLO – Earlier national and Community word and figurative marks PEPE and PEPE JEANS – Restitutio in integrum – Relative ground for refusal – Likelihood of confusion – Similarity between products – Article 78 of Regulation No (EC) 40/94 (now Article 81 of Regulation (EC) No 207/2009) – Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Taking unfair advantage of the distinctive character or repute of the earlier mark

(Council Regulation No 40/94, Art. 8(5))

1.      There is, for the average Spanish consumer, a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, between, on one hand, the word sign PEPEQUILLO, registration of which as a Community trade mark is sought in respect of ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’, ‘Clothing, footwear, headgear’ and ‘Commercial retailing of any object; commercial management assistance in relation to franchises; promotion and selling via computer networks; import-export agency services’ falling within classes 18, 25 and 35 of the Nice Agreement and, on the other hand, the word and figurative marks PEPE and PEPE JEANS registered previously in Spain as a Community trade mark in respect of identical or similar products.

Although the sign PEPEQUILLO differs from the earlier sign PEPE because of the last two syllables, which are longer than the first two, and from all the earlier signs by reason of the fact that it is a relatively long word, whereas the other earlier signs are generally short words, like PEPE, or two words, like PEPE JEANS, it must nevertheless be noted that that is not decisive enough to exclude any visual similarity because, according to the settled case-law, the consumer generally pays greater attention to the beginning of a mark than to the end. Consequently, it must be recognised that, visually, there is an average degree of similarity between the signs in question.

Regarding a phonetic comparison of the signs, the first two syllables of the signs are identical and are pronounced in the same way. It is true that the tonic stress falls on the third syllable in PEPEQUILLO and on the first in the earlier signs, but that is not sufficient to conclude that there is no phonetic similarity at all. Consequently it must be found that there is at least a low degree of phonetic similarity in the signs in question.

Although the sign PEPEQUILLO is, in itself, devoid of meaning because it is not a common name, the average Spanish consumer might divide it into two words which do have a meaning for him, namely ‘pepe’ and ‘quillo’. These two words, taken separately, have an exact meaning for Spanish consumers: ‘pepe’ is the diminutive of the forename José and ‘quillo’ is the familiar abbreviation of ‘chiquillo’. Therefore, although the current diminutives of ‘Pepe’ are ‘pepito’ and ‘pepillo’, there is a possibility that the average Spanish consumer will think that PEPEQUILLO means ‘Pepe the kid’. It follows that the average Spanish consumer may be led to think that a play on words has been used to form the mark applied for from the diminutive Pepe, as is the case in relation to the earlier marks. It must therefore be concluded that the signs in question are conceptually similar.

In addition, the PEPE mark has a certain repute, at least in relation to the Spanish section of the relevant public, and has therefore acquired a high level of distinctiveness.

In conclusion, the PEPE and PEPE JEANS marks have a distinctive character such that the similarity between the opposing signs – visually, phonetically and conceptually – and the identity of the goods and services in question are sufficient to create a likelihood of confusion.

(see paras 77-80, 82-84, 91, 93, 96)

2.      There is a likelihood that the word sign PEPEQUILLO, registration of which as a Community trade mark is sought in respect of ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’, ‘Clothing, footwear, headgear’ and ‘Commercial retailing of any object; commercial management assistance in relation to franchises; promotion and selling via computer networks; import-export agency services’ falling, respectively, within classes 18, 25 and 35 of the Nice Agreement, may take unfair advantage of the reputation of the word and figurative PEPE and PEPE JEANS marks, within the meaning of Article 8(5) of Regulation No 40/94 on the Community trade mark.

Consumers will buy a product of the PEPEQUILLO brand not only because they wish to buy jeans or a bag, but also because they wear that brand which is similar to earlier PEPE marks with a reputation.

The goods covered by the mark applied for are similar. For that reason and having regard to the similarity of the signs in question, Spanish consumers may see a connection between the earlier PEPE marks and the mark applied for.

(see paras 118-120)