Comparison must be made between goods as registered, not as actually used

In Kavaklidere-Europe v Office for Harmonisation in the Internal Market (OHIM) (Case T-276/09, June 21 2012), the General Court has agreed with the Fourth Board of Appeal of OHIM that there was a likelihood of confusion between Kavaklidere-Europe’s Community trademark (CTM) application for the word mark YAKUT and the earlier CTM registration for YAKULT, depicted below, owned by Yakult Honsha Kabishiki Kaisha. 

The applicant sought registration of its mark for "alcoholic beverages (except beers)" in Class 33 of the Nice Classification. The earlier mark was registered for goods in Classes 29 and 32, including "beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages".

Yakult’s opposition was based on Articles 8(1), 8(4) and 8(5) of the Community Trademark Regulation (207/2009); however, both the Opposition Division and the Board of Appeal of OHIM upheld the opposition on the basis of Article 8(1)(b) and did not examine the additional grounds.

The applicant alleged that the Board of Appeal had infringed Article 8(1) of the regulation, in that there was no likelihood of confusion because:

• the relevant public considered the goods in question to be different; and
• the earlier mark was a device, whereas the mark applied for was a word mark.

The parties did not dispute the Board of Appeal's finding that the relevant public was the average final consumer in the European Union, who does not display a particularly high level of attention at the time when a purchase is made. The General Court had already held that alcoholic beverages are consumer goods produced for the mass market and, accordingly, their average consumer is deemed to be reasonably well-informed, observant and circumspect, and to have an average level of attention (see Azienda Agricola Colsaliz di Faganello Antonio v OHIM (Case T-525/10) and Castell del Remei ODA v OHIM (T-101/06)).

With regard to the similarity of the goods, the applicant argued that:

• beer and wine are not considered to be similar by the relevant public - they are distinct families of alcoholic beverages because of their different origins, production methods and different basic ingredients; and
• the earlier mark had not yet been used in relation to beers and, having been registered for almost five years at the time, was soon to be liable to be revoked in part for non-use.

The General Court noted that, whilst wines may have a low degree of similarity with beers, the YAKUT mark had been applied for in respect of "alcoholic beverages". These also included cider and "alcopops", already found to be "very similar" to beer by the General Court in Anheuser Busch v OHIM (Case T-366/05) because they "are consumed for the same reason and have the same distribution outlets". Therefore, a high degree of similarity was not called into question simply because some of the goods covered by the mark applied for (wines) had a low degree of similarity with certain goods covered by the earlier mark.

The General Court reiterated that it was immaterial that the earlier mark had not been used in relation to beers, because the comparison had to be made between the lists of goods as registered/applied for and not as actually used.

With regard to the similarity between the marks, the applicant argued that their overall impression was different because the earlier mark was a "figurative mark composed of an oval outline", while the mark applied for was a word mark.

The General Court held that the graphic element of the earlier mark consisted of "shapes similar to brackets" merely surrounding the word component. As such, they were not the dominant element in the overall impression (in line with the court’s decision in Saint-Gobain Pam v OHIM (Case T-364/05)).

The General Court also found that there was a high degree of phonetic similarity, as the mark applied for was only distinguishable by the addition of the letter ‘l’. A conceptual comparison was not possible as both marks were devoid of meaning.

In light of the high degree of visual and phonetic similarity between the marks and the high degree of similarity between the goods in question, the court concluded that there existed a likelihood of confusion between the marks and that the appeal should be dismissed in its entirety. 

Cam Gatta, D Young & Co LLP, London