JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
31 January 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark babilu – Earlier Community word mark BABIDU – Relative ground for refusal – Likelihood of confusion – Similarity of the services – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑66/11,
Present‑Service Ullrich GmbH & Co. KG, established in Erlangen (Germany), represented by A. Graf von Kalckreuth and I. Stein, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Punt-Nou, SL, established in Valencia (Spain), represented by I. Sempere Massa, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 19 November 2010 (Case R 773/2010-2), concerning opposition proceedings between Punt-Nou, SL and Present‑Service Ullrich GmbH & Co. KG,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas, President, V. Vadapalas and K. O’Higgins (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 28 January 2011,
having regard to the response of OHIM lodged at the Court Registry on 2 May 2011,
having regard to the response of the intervener lodged at the Court Registry on 29 April 2011,
having regard to the decision of 17 June 2011 refusing leave to lodge a reply,
having regard to the General Court’s written question to the parties,
having regard to the applicant’s failure to reply to that question,
having regard to the response to that question lodged at the Court Registry by OHIM and the intervener on 19 and 30 July 2012 respectively,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 2 September 2008, the applicant, Present-Service Ullrich GmbH & Co. KG, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark in respect of which registration was sought is the word sign babilu.
3 The goods and services in respect of which registration was sought are in, inter alia, Class 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Advertising; advertising mail; dissemination of advertising; on line advertising on a computer network; advertising mail; advertising on the Internet, for others; presentation of companies on the Internet and other media; provision of auctioneering services on the Internet’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 47/2008 of 24 November 2008.
5 On 9 February 2009, the intervener, Punt-Nou, SL, filed a notice of opposition to the registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on the earlier Community word mark BABIDU, filed on 19 September 2003 and registered on 11 May 2007 under No 3 363 645 and covering, inter alia, services in Class 35 corresponding to the following description: ‘Commercial retailing, import and export; commercial management assistance in relation to franchises; franchise-issuing services in relation to commercial management assistance; publicity; business management; business administration; office functions’. In the English version of the list of the goods and services covered by the earlier trade mark, the word ‘publicidad’ was translated as ‘publicity’ whereas, in the official English version of the Nice Classification and in the list of the services in Class 35 covered by the mark applied for, that word is translated as ‘advertising’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 By decision of 9 March 2010, the Opposition Division upheld the opposition.
9 On 4 May 2010, the applicant filed an appeal with OHIM against the Opposition Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
10 By decision of 19 November 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.
11 The Board of Appeal held that the relevant public consisted of professionals and that it had a higher than average level of attentiveness. It also held that the services covered by the marks at issue were identical, and observed that those marks displayed a high degree of similarity visually and aurally, and that they had no meaning conceptually. It therefore considered that there was a high degree of similarity overall between those marks. It added that the earlier trade mark displayed a normal degree of distinctiveness and concluded that, in a global assessment of the evidence in the case, the Opposition Division had not erred in finding that there was a likelihood of confusion between the marks at issue.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– dismiss the opposition and declare that the mark applied for must be registered for all the goods and services in respect of which the application was made;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 The intervener contends that the Court should:
– dismiss the action;
– make an appropriate order as to costs.
Law
15 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. In support of that plea, firstly, it claims that the Board of Appeal was wrong to take the view that the services in question were identical. Secondly, it contests the Board of Appeal’s finding that there is a high degree of similarity overall between the marks at issue. Thirdly and lastly, it claims that the Board of Appeal was wrong to conclude that there was a likelihood of confusion between those marks.
16 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
18 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
19 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
20 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either inherently or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether there exists a likelihood of confusion (see judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraphs 32 and 33 and the case-law cited, and judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraph 67).
21 The question as to whether the Board of Appeal was right to hold that there was a likelihood of confusion between the earlier trade mark and the mark applied for must be examined in the light of those considerations.
Relevant public
22 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case‑law cited).
23 Firstly, in view of the fact that the earlier trade mark is a Community trade mark, the relevant territory for the purposes of assessing the likelihood of confusion is that of the European Union, as the Board of Appeal correctly stated in paragraph 17 of the contested decision, which, moreover, is not disputed by the parties.
24 Secondly, in paragraph 21 of the contested decision, the Board of Appeal indicated that the relevant public consisted of professionals. That assessment – which, moreover, is not disputed by the parties – must be affirmed, because of the nature of the services in question.
25 Thirdly, it should be borne in mind that, given the nature of the services in question, the relevant public has a higher than average level of attentiveness, as the Board of Appeal noted in paragraph 21 of the contested decision, and which, moreover, is not disputed by the parties.
Comparison of the services
26 According to consistent case-law, in order to assess the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 85, and easyHotel, paragraph 18 above, paragraph 45).
27 Article 119 of Regulation No 207/2009 provides inter alia:
‘1. The application for a Community trade mark shall be filed in one of the official languages of the European Community.
2. The languages of the Office shall be English, French, German, Italian and Spanish.
3. The applicant must indicate a second language which shall be a language of the Office the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings … ‘.
28 Article 120(3) of Regulation No 207/2009 stipulates inter alia that, ‘[i]n cases of doubt, the text in the language of the Office in which the application for the Community trade mark was filed shall be authentic’.
29 According to point I thereof, Communication No 4/03 of the President of OHIM of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 9/2003, p. 1647) was intended to explain and clarify the practice of OHIM ‘regarding the use of class headings and the consequences of such use when Community trade mark applications or registrations are restricted or partially surrendered or are involved in opposition or cancellation proceedings’.
30 Under the second paragraph of Point III of that communication:
‘It constitutes a proper specification of goods and services in a [Community trade mark] application if the general indications or the whole class headings provided for in the Nice Classification are used. The use of these indications allows a proper classification and grouping. [OHIM] does not object to the use of any of the general indications and class headings as being too vague or indefinite, contrary to the practice which is applied by some national offices in the European Union and in third countries in respect of some of the class headings and general indications.’
31 The first paragraph of Point IV of Communication No 4/03 provided:
‘The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.’
32 Paragraph 2 of Point V of Communication No 4/03 stated inter alia:
‘As regards opposition and cancellation proceedings, the rule that the use of the whole class heading of a particular class means that all the goods within that class are included has the consequence that when the later application or registration contains goods or services properly classified in that same class, the goods or services are identical with the goods or services in the earlier mark.’
33 Following the judgment of the Court of Justice in Case C‑307/10 Chartered Institute of Patent Attorneys [2012] ECR I‑0000, on 20 June 2012 the President of OHIM adopted Communication No 2/12 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 7/2012). That communication, which came into force on 21 June 2012, repeals and replaces Communication No 4/03.
34 Under the first paragraph of Point III of Communication No 2/12:
‘In view of the … statements by the Court [in Chartered Institute of Patent Attorneys], applicants are not precluded from using the general indications of the class headings to identify the goods and services for which protection is sought, provided that this identification is sufficiently clear and precise.’
35 The first paragraph of Point IV of that communication states:
‘As to the question whether or not the use of the entire class heading gives protection for all the goods/services in any particular class, the Court has indicated that, in order to respect the requirements of clarity and precision …, an applicant for a trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.’
36 Under Point V of Communication No 2/12:
‘As regards Community trade marks registered before the entry into force of the present Communication which use all the general indications listed in the class heading of a particular class, the Office considers that the intention of the applicant, in view of the contents of the previous Communication [No] 4/03, was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.
The above is without prejudice to the application of Article 50 [of Regulation No 207/2009].’
37 In the present case, in paragraphs 23 to 38 of the contested decision, the Board of Appeal concluded that the services in Class 35 covered by the mark applied for were identical to those in the same class covered by the earlier trade mark.
38 Firstly, the Board of Appeal noted the considerations appearing in Communication No 4/03 and set out in paragraphs 31 and 32 above. Secondly, it indicated that, in the Spanish language version of the list of the goods and services covered by the earlier trade mark, – which was the authentic language version in the present case – the services described as ‘publicity; business management; business administration; office functions’ were as follows: ‘Publicidad; gestión de negocios comerciales; administración comercial; trabajos de oficina’. The Board stated that that wording corresponded with that used in the official Spanish version of the class heading for Class 35, with the result that the word ‘publicité’ should have been translated, in the English version of the list of the goods and services covered by the earlier trade mark, as ‘advertising’ and not as ‘publicity’. Thirdly, the Board of Appeal held that, since the earlier trade mark ‘contain[ed] the Class 35 heading’ and that it could be held that that trade mark covered all the services in that class, ‘the contested provision of auctioneering services on the Internet in [C]lass 35 [fell] within the class heading covered by the earlier trade mark and [was] therefore identical thereto’. Fourthly, the Board of Appeal took the view that the services covered by the mark applied for, described as ‘advertising mail; dissemination of advertising; on line advertising on a computer network; advertising mail; advertising on the Internet, for others; presentation of companies on the Internet and other media’ were covered by the broader category of services described as ‘advertising’ covered by the earlier trade mark and were thus identical to those services. Fifthly, it observed that the marks at issue both covered services described as ‘advertising’ and that, accordingly, those services were identical.
39 First of all, the applicant claims that, for classes other than Class 35, the goods and services covered by the mark applied for are completely different from those covered by the earlier trade mark, with the result that professionals will have no reason to believe that those trade marks are being used by economically-linked undertakings.
40 Next, the applicant asserts that the services in Class 35 described as ‘[c]ommercial retailing, import and export’, ‘commercial management assistance in relation to franchises’, ‘franchise-issuing services in relation to commercial management assistance’, ‘business management’, ‘business administration’ and ‘office functions’ covered by the earlier trade mark are completely different from the services in the same class covered by the mark applied for.
41 In addition, the applicant argues that the word ‘publicity’ appearing in the English version of the list of the goods and services covered by the earlier trade mark is not synonymous with the word ‘advertising’ appearing in both the English version of the list of the services in Class 35 covered by the mark applied for and the official English version of the class heading for that class. It states that the word ‘publicity’ should be taken to mean ‘public relations’.
42 Lastly, the applicant emphasises that the intervener and itself operate in two completely different commercial sectors.
43 OHIM and the intervener contest the applicant’s arguments.
44 Firstly, it should be noted that, as OHIM rightly points out, given that the opposition was brought against only the services in Class 35, the applicant’s arguments relating to the other goods and services covered by the marks at issue are irrelevant in the context of the present action.
45 Secondly, the applicant’s claim that it operates in a completely different commercial sector from the intervener is also irrelevant. In order to assess the similarity of the goods or services at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009, the group of goods or services protected by the marks at issue must be taken into account, and not the goods or services actually marketed under those marks (see, to that effect, judgment of 16 June 2010 in Case T‑487/08 Kureha v OHIM – Sanofi‑Aventis (KREMEZIN), not published in the ECR, paragraph 71, and judgment of 17 January 2012 in Case T‑249/10 Kitzinger v OHIM – MDR and ZDF (KICO), not published in the ECR, paragraph 23).
46 Thirdly, the applicant’s claim that the English words ‘advertising’ and ‘publicity’ are not the same cannot be accepted. The earlier Community trade mark application had been filed in Spanish, with the result that, under Article 120(3) of Regulation No 207/2009, Spanish is the authentic language in the present case. The second language indicated by the intervener in that application, namely English, is, pursuant to Article 119(3) of that regulation, a language which it has accepted may be used as a language of proceedings for opposition, revocation or invalidity proceedings. In the Spanish language version of the list of the goods and services covered by the earlier trade mark, the services claimed are worded as follows: ‘Publicidad; gestión de negocios comerciales; administración comercial; trabajos de oficina’. That wording corresponds exactly to that of the official Spanish version of the class heading of Class 35. The official English version of that class heading reads as follows: ‘Advertising; business management; business administration; office functions’. Accordingly, as the Board of Appeal rightly concluded in paragraph 35 of the contested decision, the word ‘publicité’ should have been translated, in the English version of the list of the goods and services covered by the earlier trade mark, as ‘advertising’ and not as ‘publicity’.
47 Fourthly, it should be noted that, as is clear from paragraph 46 above, the marks at issue both cover services described as ‘publicidad’. Those services must therefore be considered to be identical, as the Board of Appeal rightly found in paragraph 38 of the contested decision.
48 Fifthly, regarding the services described as ‘advertising mail’, ‘dissemination of advertising’, ‘on line advertising on a computer network’, ‘advertising mail’, ‘advertising on the Internet, for others’ and ‘presentation of companies on the Internet and other media’ covered by the mark applied for, it must be found that, as the Board of Appeal rightly observed in paragraph 37 of the contested decision, those services are included in the broader category of ‘advertising’ services covered by the earlier trade mark and, accordingly, are identical to those services (see, to that effect, Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraphs 32 and 33).
49 Sixthly, regarding the ‘provision of auctioneering services on the Internet’ covered by the mark applied for, it should be noted that, as has already been stated in paragraph 46 above, the earlier trade mark contains all the general indications of the class heading of Class 35. In accordance with the practice of OHIM described in Communication No 4/03 (see paragraphs 29 to 32 above), which is not challenged by the applicant, such use of all the general indications of the class heading of Class 35 constitutes, on the part of the intervener, a claim to all the services falling within that class and, in particular, to ‘auctioneering’ services, which are among the services included in the alphabetical list of that class. Since ‘auctioneering’ services clearly include the ‘provision of auctioneering services on the Internet’ covered by the mark applied for, those two service categories are identical, as the Board of Appeal rightly found in paragraph 36 of the contested decision.
50 It is true that, following Chartered Institute of Patent Attorneys (paragraph 33 above), Communication No 4/03 has, with effect from 20 June 2012, been repealed and replaced by Communication No 2/12. That requires some precision on the part of an applicant for a Community trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought (see paragraphs 34 and 35 above). However, in the light of the principle of legal certainty and pursuant to Point V of Communication No 2/12 (see paragraph 36 above), by using all the general indications listed in the class heading of Class 35, the intervener, whose earlier Community trade mark had been registered before that communication came into force, intended to cover all the services included in the alphabetical list of that class. In its written pleadings, the intervener has confirmed that such had indeed been its intention when submitting its application for registration of the earlier trade mark.
51 Seventhly and lastly, the applicant’s argument alleging that the other services in Class 35 covered by the earlier trade mark, as set out in paragraph 40 above, are completely different from those in the same class covered by the mark applied for must be rejected as irrelevant. In comparing goods and/or services, it is important to establish whether there is identity or similarity between all the goods and/or services covered by the Community trade mark application against which the opposition was directed and the goods and/or services protected by the earlier trade mark (see, to that effect, judgment of 21 January 2010 in Case T‑34/07 Goncharov v OHIM – DSB (DSBW), not published in the ECR, paragraph 39). As has been shown in paragraphs 44 to 50 above, that is the situation in the present case.
52 It follows that the services in question must be considered to be identical.
Comparison of the signs
53 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks at issue, must be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant components. The perception which the average consumer of the goods or services in question has of the marks plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
54 In the present case, the marks at issue are the earlier word mark BABIDU and the word mark applied for, babilu.
Visual comparison
55 In paragraphs 48 and 49 of the contested decision, the Board of Appeal concluded that there was a high degree of visual similarity between the marks at issue, having noted, in essence, that they were the same length and were identical in terms of their first four letters and their last letter.
56 The applicant does not put forward any complaint intended specifically to refute that assessment by the Board of Appeal, which is shared by OHIM and the intervener.
57 Firstly, it should be noted that, given that the earlier trade mark and the mark applied for are word marks, the fact that the former is represented in capital letters, whereas the latter is represented in lower-case letters, is irrelevant for the purposes of a visual comparison of those marks. According to case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (Case T‑211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II‑1297, paragraph 33, and judgment of 13 February 2007 in Case T‑353/04 Ontex v OHIM – Curon Medical (CURON), not published in the ECR, paragraph 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22 May 2008 in Case T‑254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43).
58 Secondly, there is a strong visual resemblance between the marks at issue. Both marks consist of a single word containing six letters, the first four and the last of which are identical and appear in the same order. The only difference visually between the marks at issue is represented by the fifth letter, which is the letter ‘d’ in the earlier trade mark and the letter ‘l’ in the mark applied for. However, in view of the fact that consumers normally attach greater significance to the beginnings of words, that difference is not sufficient to offset the strong visual similarity created by the presence of the common element ‘babi’ at the beginning of the marks at issue.
59 Accordingly, the Board of Appeal was right to consider that there was a high degree of visual similarity between the marks at issue.
Aural comparison
60 In paragraphs 42 to 47 of the contested decision, the Board of Appeal took the view that the marks at issue displayed a high degree of aural similarity, in essence, on the ground that their first two syllables were pronounced in the same way, that their third syllables were similar, that they had the same vowel sequence and that they were identical in length.
61 The applicant challenges that assessment. It argues that the common element ‘babi’ is purely descriptive and thus cannot constitute the dominant element of the marks at issue. More specifically, it notes that the earlier trade mark covers, inter alia, ‘accessories for babies’ in Class 24. It claims that, as a result, the consumer will focus on the last element of the marks at issue, namely the syllables ‘du’ and ‘lu’, which are clearly dissimilar. The applicant also relies on the fact that the phonetic codes obtained by applying the phonetic algorithms Kölner Phonetik, Soundex and Metaphone to the marks at issue are different.
62 OHIM and the intervener reject the applicant’s arguments.
63 There is a high degree of aural similarity between the marks at issue. They both contain three open syllables, the first two of which, namely ‘ba’ and ‘bi’, are identical. On that point, it should be borne in mind that, as has been mentioned in paragraph 58 above, consumers normally focus particularly on the beginning of a word. Moreover, the marks at issue contain the same vowel sequence ‘a’, ‘i’ and ‘u’. The sole difference is that the last syllable begins with the consonant ‘d’ in the earlier trade mark and the consonant ‘l’ in the mark applied for. However, as the Board of Appeal rightly observed, the fact that those consonants are both followed by the vowel ‘u’ leads to similar sounds when pronouncing the last syllable of each of the marks at issue.
64 That assessment is not undermined by the applicant’s claim that the element ‘babi’ is descriptive of the goods protected by the marks at issue and, more specifically, of the ‘accessories for babies’ in Class 24 covered by the earlier trade mark. Rather, the necessary comparison must be carried out by taking into account only the goods and/or services covered by the mark applied for against which the opposition was directed, and the goods and/or services covered by the earlier trade mark on which that opposition was based. Therefore, in the present case, as OHIM rightly points out, that comparison cannot be carried out by taking into consideration the goods in Class 24 protected by the earlier trade mark. It should be added that nothing in the wording of the services covered by the earlier trade mark or in the wording of the services covered by the mark applied for permits the conclusion that those various services have any connection with babies. Accordingly, it cannot be considered that the relevant public will pay only scant attention to the element ‘babi’ and will focus on the syllables ‘du’ and ‘lu’.
65 Nor is the assessment set out in paragraph 63 above weakened by the applicant’s argument based on the three phonetic algorithms mentioned in paragraph 61 above. First, those sets of rules for indexing words according to their pronunciation, which consist of coding those words with a string of characters in order to be able to find a correspondence between them, have been developed for use with German (Kölner Phonetik) or English (Soundex and Metaphone). Accordingly, as OHIM rightly points out, the use of those codes could not give any meaningful results where the words concerned are pronounced in other languages of the European Union. Second, even with regard to German and English, the fact that different phonetic codes are obtained when those algorithms are applied to the marks at issue does not necessarily mean that there is no aural similarity between those marks.
66 In the light of the foregoing, it must be found that the Board of Appeal was right to conclude that there was a high degree of aural similarity between the marks at issue.
Conceptual comparison
67 In paragraphs 50 to 54 of the contested decision, the Board of Appeal held that neither of the marks at issue had any meaning. It observed, firstly, that it was unlikely that those marks would be perceived as being divided into two elements (namely ‘babi’ and ‘du’ for the earlier trade mark, or ‘babi’ and ‘lu’ for the mark applied for) and, secondly, that there was nothing in the wording of the services concerned to indicate that those services were connected with the baby goods sector.
68 The applicant argues that the word ‘babilu’ forming the mark applied for has a meaning which allows it to be distinguished from the earlier trade mark. First, that word is the Akkadian variant of the Greek word ‘babylon’ and means ‘gateway of the god’. Second, it represents the imperative form of the verb ‘babili’ – meaning ‘to chat(ter)’ – in Esperanto. Third, the relevant public will realise that the word ‘babilu’ includes elements of the words ‘baby’ and ‘illustration’, with the result that ‘goods and services relating [to] babies will be illustrated by using the applicant[‘]s trade mark’.
69 OHIM and the intervener contest the applicant’s arguments.
70 The applicant’s arguments do not show that the Board of Appeal erred in concluding that neither of the marks at issue had any meaning.
71 Thus, it is clear that only a very small proportion of the relevant public will be able to understand the word ‘babilu’ as being the Akkadian version of the Greek word ‘babylon’ and as meaning ‘gateway of the god’. Indeed, as OHIM rightly notes, Akkadian is an extinct Semitic language that was spoken in Mesopotamia. Likewise, very few people from the relevant public will recognise in the word ‘babilu’ the imperative form in Esperanto of the verb ‘babili’ and will know that that word means ‘to chat(ter)’, since that language has only a limited number of speakers within the European Union. Lastly, the claim that the relevant public will see in the word ‘babilu’ elements of the words ‘baby’ and ‘illustration’ is pure speculation, particularly given that the services in Class 35 covered by the mark applied for have nothing to do with babies.
72 It follows from the foregoing that neither of the two marks has a meaning which would connect it with a particular concept and that, accordingly, they are not comparable conceptually.
73 It follows that the Board of Appeal did not err in considering, in paragraph 55 of the contested decision, that, assessed globally, the marks at issue displayed a high degree of similarity.
Likelihood of confusion
74 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and VENADO with frame and Others, paragraph 19 above, paragraph 74).
75 In paragraph 57 of the contested decision, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue.
76 The applicant contests that conclusion, claiming that the common element ‘babi’ has only a weak distinctiveness, that the relevant public will therefore focus on the syllables ‘du’ and ‘lu’ and that that public has a higher than average level of attentiveness.
77 OHIM and the intervener share the Board of Appeal’s analysis.
78 In view of the fact that the services in question are identical, that there is a high degree of similarity overall between the marks at issue and that the earlier trade mark has a normal inherent distinctiveness, the Board of Appeal was right to conclude that there was a likelihood of confusion between those marks even though, as stated in paragraph 25 above, the relevant public has a higher than average level of attentiveness. The applicant’s claim that the element ‘babi’ has only weak distinctiveness, such that the public will focus on the syllables ‘du’ and ‘lu’, has already been rejected in paragraph 64 above.
79 It follows from all of the foregoing that the single plea in law must be rejected as unfounded.
80 Accordingly, the action must be dismissed in its entirety.
Costs
81 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Present‑Service Ullrich GmbH & Co. KG to pay the costs.
Papasavvas | Vadapalas | O’Higgins |
Delivered in open court in Luxembourg on 31 January 2013.
[Signatures]