General Court considers distinctiveness of 'Afrika' when used with foodstuffs

In Preparados Alimenticios SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-377/10, November 18 2013), the General Court has considered the degree of distinctive character of the geographical term 'Afrika' when used in respect of foodstuffs.

On May 31 2006 German company Rila Feinkost-Importe GmbH & Co KG filed a Community trademark application for the word mark JAMBO AFRIKA in Classes 29, 30 and 33 of the Nice Classification. Spanish company Preparados Alimenticios SA opposed the application on the basis of various Spanish and Community trademarks in Classes 29 and 30 which included the word element 'jumbo'. The opposition was also based on the well-known unregistered word mark JUMBO.

The Opposition Division of OHIM upheld the opposition with respect to the goods in Classes 29 and 30, but dismissed it in relation to the goods in Class 33. Rila appealed. The First Board of Appeal of OHIM concluded that there was no likelihood of confusion between the marks and thus upheld the appeal. On appeal, the General Court confirmed the decision of the Board of Appeal.

In its judgment, the General Court first considered the question of the relevant public. Preparados Alimenticios argued that the relevant public consisted of African immigrants residing in the European Union given, for example, that one of its compound JUMBO marks also contained the word 'chorba', which referred specifically to African foodstuffs. The General Court dismissed that argument, maintaining that the relevant public consisted of EU consumers - and, in particular, Spanish consumers - since the earlier marks were Community and Spanish trademarks.

Another significant observation of the General Court related to the conceptual differences between the marks. The Board of Appeal had held that there was a strong conceptual dissimilarity because the word 'Afrika' would sound exotic to the average EU consumer given that, unlike the names of other parts of the world (eg, Asia and South America), it is not commonly associated with foodstuffs. The General Court concluded that, although 'Afrika' is a geographical term, it would not immediately be associated with the origin of the goods.

The General Court further found that the phonetic similarity which may exist between JAMBO AFRIKA and JUMBO had limited importance given that the goods covered by the marks are generally offered for sale at supermarkets, department stores and other similar retail outlets. The visual aspect thus took on greater importance given that, when purchasing such goods, the relevant public usually perceives the marks visually.

Lastly, Preparados Alimenticios argued that the earlier JUMBO marks were well known throughout the world - and particularly in Africa - and that the awareness of the marks in Africa had also spread to Europe given the large number of African immigrants living in Europe. The General Court rejected this argument, emphasising that the relevant public consisted of consumers of the European Union and, particularly, of Spain. As it had not been proved that the marks were well known in the European Union, the opposition based on the allegedly well-known JUMBO marks was dismissed.

Marta Rodríguez Aguado, Elzaburu, Madrid