General Court considers implications of IP TRANSLATOR for the first time

In Present-Service Ullrich GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-66/11, January 31 2013), the General Court has had its first occasion to consider the consequences of the IP TRANSLATOR judgment.

The case was the result of an opposition by the Spanish owner of the Community trademark BABIDU covering, among other things, services in Class 35 of the Nice Classification, against the German applicant for BABILU in the same class. The opposition was upheld by the Opposition Division of OHIM, and the Board of Appeal confirmed the decision.

On appeal, the applicant relied on a single plea in law, alleging infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009). The General Court referred to established case law setting out how to compare trademarks and analyse the likelihood of confusion, especially when the earlier mark covers the whole of the European Union. The court then stated that, in this case, the relevant public consisted of professionals in the whole of the European Union; the parties did not dispute this finding.

Concerning the comparisons of the services, the court referred to Communication 4/03 of the President of OHIM (June 16 2003) concerning the use of class headings and noted that it had been replaced by Communication 2/12 after the IP TRANSLATOR decision of June 19 2012.

The Board of Appeal had found that the services covered by both marks were identical. It had referred to Communication 4/03 and mentioned that the earlier mark used the exact wording of the Class 35 heading in Spanish, which should have been translated by the exact wording of the Class 35 heading in English. Therefore, the registration contained all the services included in Class 35.

The court found that the applicant's argument that, for classes other than Class 35, the goods and services covered by the mark applied for were completely different from those covered by the earlier mark, was irrelevant. The applicant's claim that it is active in a commercial sector completely different from that in which the opponent operates was also found to be irrelevant: to assess the similarity of goods or services, the court must not take into account the goods or services actually marketed under the marks, but the group of goods or services protected by the marks.

The fact that the earlier mark covered 'publicity', while the mark applied for covered 'advertising', was irrelevant, since both marks were filed for the class heading of Class 35, and the use of the word 'publicity' in the English translation of the earlier mark was deemed to be a translation mistake. As a consequence, both marks covered advertising and the services were identical.

Certain services covered by the mark applied for, such as "advertising mail", "dissemination of advertising" and "online advertising on a computer network" were included in the general category of "advertising services" and, therefore, were identical to those services.

The contested mark also included the "provision of auctioneering services on the Internet". According to Communication 4/03 (and this was not disputed by the applicant), the use of the general indications listed in Class 35 meant that the earlier mark included all the services listed in the class, including the service of "auctioneering".

The court then pointed out that Communication 2/12 requires that applicants be more specific if they wish to claim all the products or services included in one class. However, in light of the principle of legal certainty, the court considered that, by using the general indications in Class 35 before the enactment of the new communication, the opponent had intended to protect all the services included in that class.

The court thus concluded that the services covered by the marks were identical.

This part of the decision, if confirmed by the ECJ, avoids the opening of Pandora's box - that is, having to define the exact content of the list of products and services covered by marks filed before the IP TRANSLATOR decision. This will protect some trademark owners, but might create issues for others who had not realised the extent of protection requested.

With regard to the comparison of the marks, the court first noted that the fact that one mark is written in lower case while the other is represented in capital letters was irrelevant, and held that the marks were visually highly similar.

The marks were also considered to be highly similar phonetically, despite the applicant's argument that the 'babi' part of its mark was descriptive of the products in Class 24 covered by the earlier mark. The court noted that it could take into consideration only the goods/services against which the opposition was directed - here, Class 35 services. In addition, nothing in the list of services claimed by the earlier mark or the mark applied for had any connection with babies.

Finally, concerning the conceptual comparison, the applicant explained that 'babilu' is the Akkadian variant of the Greek word 'Babylon' and means the ‘gateway of the god’. It was also supposed to represents the imperative form of the verb 'babili', which means 'to chat' in Esperanto. The court did not follow this very imaginative line of argument: it stated that Akkadian is a dead language and that very few members of the relevant public would speak Esperanto.

The court thus concluded that the marks had no conceptual meaning and were not comparable from a conceptual point of view. Arguably, applicants should ensure, when choosing a mark for its conceptual meaning, that the relevant public is well educated.

Consequently, the court held that the Board of Appeal had correctly found that there was a likelihood of confusion between the marks, even if the relevant public had a higher-than-average level of attentiveness.

Richard Milchior, Granrut Avocats, Paris