Distribution and retail services are similar where goods are identical or highly similar

In Basic AG Lebensmittelhandel v Office for Harmonisation in the Internal Market (OHIM) (Case T-372/11, June 26 2014), the General Court has found that there was a likelihood of confusion between two BASIC marks for different types of services.

Basic AG Lebensmittelhandel filed an application for registration of the following figurative mark for, among other things, retail and wholesale services relating to foodstuffs and beverages in Class 35 of the Nice Classification:  

Repsol YPF SA filed an opposition based on the following earlier figurative mark registered for, among other things, distribution of staple foodstuffs in Class 39:

Initially, the General Court stated that the relevant public for the assessment of the likelihood of confusion was the public common to the services covered by the marks. It was not contested that the relevant public was composed of professionals as regards the services in Class 39 covered by the earlier mark and the wholesale services in Class 35 covered by the mark applied for. However, Basic claimed that retail services in Class 35 covered by the mark applied for were not directed at professionals, but at end consumers. The General Court did not agree, finding that the retail services were also directed at business intermediaries, such as the manufacturer of the product. Thus, in the present case, the relevant public consisted of professionals.

The General Court then looked at the similarity of the products covered by the services at issue. Contrary to what Basic claimed, it found that, as beverages and foodstuffs are of the same nature, are intended for human consumption, are likely to be processed by the same undertakings, are generally sold in the same sales outlets and are often consumed at the same time, the foodstuffs and beverages covered by the mark applied for were identical or highly similar to the "staple foodstuffs" covered by the earlier mark.

The General Court went on to look at the similarity of the services, and pointed out that services may not be regarded as dissimilar on the sole ground that they appear in different classes under the Nice Classification.

The General Court held that, when the goods covered by wholesale and distribution services are identical or highly similar, there is a similarity between those services since both enable a product to be marketed, have an intermediate function between the production and final consumption of a product, and contribute to the attainment of the same ultimate objective: the sale to the end consumer.

The General Court further found that retail and distribution services are complementary, since suppliers of retail services are generally dependent on the services of distributors to carry out their activities, in particular insofar as distributors dispatch goods to their sales outlets. Moreover, since distribution and retail activities pursue the same objective and occur at a relatively advanced stage of the marketing process, it is possible that the relevant public would think that those services are carried out by the same undertaking. Consequently, the General Court concluded that distribution and retail services are similar where the distributed/retailed goods are identical or highly similar.

Finally - and despite the fact that there was a low degree of visual similarity between the two marks - the General Court held that there was a likelihood of confusion on the part of the relevant public due to the fact that the services at issue were similar, the signs at issue were phonetically and conceptually identical and the distinctive character of the earlier mark was low. Therefore, Repsol's trademark, which was registered for specific services in Class 39, hindered the registration of Basic's trademark for specific services in Class 35.

Mette-Marie Henrichsen, Plesner, Copenhagen