'Beb' element not weakly distinctive for baby food

European Union

In Hipp & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-41/09, March 28 2012), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the trademarks BEBA and BEBIO.

Société des Produits Nestlé SA is the owner of the registered word mark BEBA for goods in Classes 5, 29 and 30 of the Nice Classification, including "foods and food substances for babies". It filed an opposition under Articles 8(1)(b) and 8(5) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)) against Hipp & Co KG's application to register the word mark BEBIO as a Community trademark for goods in the same classes, including "food for babies and infants".

The Opposition Division upheld the opposition for the goods in Classes 5, 29 and for some of the goods in Class 30, finding that there was a likelihood of confusion. The Second Board of Appeal affirmed, and Hipp appealed to the General Court.

First, as regards “food for babies and infants” in Class 5, the court held that the relevant public did not exhibit a higher than average degree of attention. The relevant public was thus the average consumer who is reasonably well-informed and reasonably observant and circumspect (Hipp & Co v OHIM (Case T-221/06), Paragraphs 40 and 41).

Turning to the comparison of the marks, the court held that they had an average degree of visual similarity, a degree of phonetic similarity and, in particular, a certain conceptual similarity for Spanish-speaking consumers (Paragraphs 32-44 and 57).

Under settled case law, the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks, must be based on the overall impression conveyed by them, bearing in mind, in particular, their distinctive and dominant components (Calvin Klein Trademark Trust v OHIM (Case C-254/09), Paragraph 45; Koipe v OHIM (Case C-498/07 P), Paragraph 59; Shaker Limiñana y Botella v OHIM (Case C-334/05 P), Paragraph 35; Lloyd Schuhfabrik Meyer & Co v Klijsen Handel (Case C-342/97), Paragraph 17; Puma v Sabel (Case C-251/95), Paragraph 23).

One of Hipp's main arguments was that 'beb' had a weak distinctive character with respect to baby food, since it refers in almost all languages to 'baby' or 'bébé', and was used in many earlier trademarks. However, somewhat surprisingly - and in contrast to a November 30 2000 judgment of the German Federal Patent Court which found that there were many marks containing the components 'beb' or 'bébé' - the General Court held that:

  • the applicant had failed to prove that the component 'beb' had a weak distinctive character in the territories concerned; and
  • therefore, there was no reason to depart from the view that the consumer normally attaches more importance to the first part of words.

Moreover, instead of accepting that 'beb' was a reference to 'baby' or 'bébé', the court stated that Spanish consumers would associate 'beb' with the Spanish verb 'beber'.

The distinctive or weak character of a component of an earlier trademark should normally play a role in the assessment of the similarity (in particular, the conceptual similarity) and also in the assessment of the risk of confusion. However, it appears that the court, somewhat controversially, decided not to take into account the weak distinctive character of the 'beb' component of the earlier trademark when examining the similarity between the marks.

The court has held on several occasions that the reputation or highly distinctive character of an earlier mark must be taken in consideration only when assessing the likelihood of confusion, and not when assessing the similarity of the marks (Ravensburger v OHIM (Case T-243/08), Paragraph 27; Parfums Christian Dior v OHIM (Case T-308/08), Paragraphs 53 and 54; Gateway v OHIM (Case T-434/05), Paragraphs 50 and 51).

In other words, even if the distinctive character of a component of the earlier mark is weak with regard to the relevant public, according to the court, there is still a likelihood of confusion when the identity or similarity of the goods covered by the marks and the degree of similarity between the marks themselves are considered, cumulatively, to be sufficiently high (see also Hrbek v OHIM (Case T-434/10); Indo Internacional v OHIM (Case T-260/08)).

This reasoning can be criticised within the context of the present dispute. Although the weakness of the component 'beb' should have played a role in the assessment of the likelihood of confusion, the court should also have examined the distinctiveness of this element when assessing the similarity of the marks at the earlier stage. Therefore, the fact that the conceptual similarity between the two marks was due to the weak and descriptive (or at least suggestive) character of the component 'beb' could not be disregarded. In other words, a descriptive element should not constitute the distinctive and dominant element in the overall impression conveyed by two marks. If a component is weak or suggestive, the consumer will usually focus on the other components - even the General Court has acknowledged this fact.  

With regard to the conceptual similarity, the court has previously held that consumers will break down a word mark into elements which, for them, suggest a concrete meaning, or which resemble words that are known to them (PJ Szolgáltató (PJ Hungary kft) v OHIM (Case T-580/08), Paragraph 74; Usinor v OHIM (Case T-189/05), Paragraph 62; Mundipharma v OHIM (Case T-256/04), Paragraph 57; Vitakraft-Werke Wührmann v OHIM (Case T-356/02), Paragraph 51).

In this respect, it would be useful if the General Court gave more guidance as to the weight that should be given to the weak or distinctive character of an earlier mark at the stage of assessing the similarity between the marks, as well as when assessing the risk of confusion.

Even if Nestlé had successfully demonstrated the reputation of the BEBA mark, the reputation of an earlier mark comes into play only at a later stage (ie, when assessing the risk of confusion under Article 8(1)(b) or when assessing the existence of a link under Article 8(5)). If the court concludes that there is no similarity between the marks at the earlier stage, the game is over (Ferrero v OHIM (Case C-552/09 P)).

Paul Maeyaert, ALTIUS, Brussels

Unlock unlimited access to all WTR content