French and Italian marks not confusingly similar for French or Dutch people

European Union
In Dr August Oetker Nahrungsmittel KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-471/09, June 28 2011), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM regarding an opposition to an application for the word mark BUONFATTI on the basis of an earlier Benelux registration for the word mark BONFAIT.

Dr August Oetker Nahrungsmittel KG filed the Community trademark application in July 2004 for various foodstuffs in Classes 29 and 30 of the Nice ClassificationBonfait BV opposed the application on the basis of the above Benelux registration covering various foodstuffs in Classes 29, 30 and 31 and of use-based rights in the mark. The opposition was rejected in February 2007 and Bonfait appealed.

In October 2009 the Fourth Board of Appeal of OHIM upheld the appeal under Article 8(1)(a) and (b) of the Community Trademark Regulation (207/2009) on the grounds that:
  • the relevant public was the average Benelux consumer and the relevant languages were French and Dutch;
  • the goods were highly similar and the marks were visually, phonetically and conceptually similar; and
  • therefore, there was a likelihood of confusion.
Oetker appealed to the General Court under Article 8(1)(b), arguing that:
  • the marks had, at the most, an average degree of similarity; and
  • the earlier mark was protected only for various ingredients of the goods covered by the mark applied for, which were mainly prepared meals.
OHIM submitted that the goods:
  • were highly similar or identical because they could emanate from the same manufacturer; and
  • were complementary.
Oetker distinguished the marks phonetically, in terms of their different number of syllables and the clearly different way in which French and Dutch consumers would pronounce them; visually, because the fact that the marks contained a number of identical letters was insufficient to make them similar; and conceptually, because, contrary to the board’s finding, the relevant Benelux public would not understand the Italian words 'Buon' and 'Fatti'.

OHIM argued that both marks were invented, but that:
  • the average consumer would consider BUONFATTI to be an Italian mark and BONFAIT a French mark; and
  • the same consumer would easily equate the two marks linguistically, visually and structurally.
Regarding the likelihood of confusion, Oetker argued that the low degree of distinctive character of the earlier mark and the - at best - average degree of similarity between the marks meant that an average degree of difference between the marks was sufficient to eliminate this. OHIM conceded that the decision under appeal did not explicitly address the distinctive character of the earlier mark, but argued that it was clear from the decision that it considered the mark to have an average degree of inherent distinctiveness.

The General Court agreed that:
  • the relevant public consiste of Benelux consumers;
  • the relevant languages were Dutch and French; and
  • the goods were highly similar. 
However, when comparing the marks, the court held that the marks had a low degree of visual, phonetic and conceptual similarity. The court went into some detail in dismissing the conceptual similarity: the average French-speaking consumer or consumer with a knowledge of French might well understand the meaning of the BONFAIT mark, but would not necessarily understand or try to translate the BUONFATTI mark; and Dutch consumers would not translate the marks into Dutch in order to ascertain their underlying meaning.

Accordingly, despite the high similarity between the goods, the low level of similarity between the marks meant that there was no likelihood of confusion. The court thus annulled the board's decision and ordered OHIM to pay its own costs and those of Oetker.

In hindsight, it is difficult to disagree with the court’s judgment. However, without defining the relevant consumers with the same degree of precision at the outset, many practitioners may well have concluded, as did OHIM, that BONFAIT and BUONFATTI were indeed confusingly similar marks when applied to identical and similar goods.

Chris McLeod, Squire Sanders Hammonds, London

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