General Court holds that judgment in previous case between same parties is highly relevant

In dm-drogerie markt GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-26/13, February 12 2014), the Third Chamber of the General Court has confirmed a decision of the First Board of Appeal of OHIM finding that there was no likelihood of confusion between the word mark BALEA and the earlier international word mark CALDEA.

In July 2010 Semtee (Andorra) filed an application for the registration of the Community word mark CALDEA for goods and services in Classes 3, 35 and 44 of the Nice Classification, including “soaps, perfumery", "consultancy relating to business management of leisure premises" and "personalised consultancy... relating to the operation of a leisure centre”.

German drugstore chain dm-drogerie markt GmbH&Co KG filed an opposition on the basis of its international word mark BALEA, which designated the European Union and covered goods in Classes 3, 5 and 8, including “soaps, perfumeries, essential oils”.

In October 2011 the Opposition Division of OHIM rejected the opposition. The Board of Appeal dismissed dm’s appeal, stating that:

• although the goods in Class 3 were identical, the services in Classes 35 and 44 were dissimilar;
• the signs were not visually or conceptually similar and had merely a low aural similarity; and
• the difference between the marks in overall terms excluded all likelihood of confusion.

On appeal to the General Court, dm relied on a single plea in law, alleging infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009). The General Court rejected dm’s plea as unfounded and dismissed the action in its entirety. The main aspects of the decision are as follows:

• The General Court underlined the relevance of its prior judgment, dating from October 2011, in dm-drogerie markt v OHIM (Case T-304/10). In contrast, dm argued that the decision in that case was not relevant in the present case. At issue in Case T-304/10 - which involved the same parties - was the alleged likelihood of confusion between a figurative Community trademark including the word element 'caldea' and the earlier word mark BALEA. The court had stated that the assessment of the visual similarity of the signs would not be affected even if their word elements alone were taken into account. Consequently, the General Court found that its previous judgment was highly relevant as regards the visual comparison of the signs for the purposes of the present decision.
• The General Court confirmed the Board of Appeal’s finding that there was no visual similarity between the signs; the differences between CALDEA and BALEA would be easily grasped by the average consumer since those signs consisted of a limited number of letters.
• As regards the phonetic similarity, the General Court found that the Board of Appeal had not erred in finding that there was only a low degree of similarity. The court referred mainly to its previous judgment and to the argument that, in certain non-Germanic languages, the letter 'C' is not pronounced like the letter 'K', but rather like the letter 'S'. dm's arguments that the letters 'B' and 'K' both belong to the group of plosive consonants was thus irrelevant.
• Again referring to its previous judgment, the General Court also agreed with the Board of Appeal that the relevant public gives priority to the visual perception of the signs at issue, since they are visually distinct. As a consequence, mere low phonetic similarity would play only a minor role in the overall assessment of the signs.
• As to the global assessment of the likelihood of confusion, the General Court – cutting short the broader arguments of the applicant – found that the fact that the goods and services are identical or similar, or that the earlier mark had a highly distinctive character, could not call into question the conclusion that there was no likelihood of confusion.

The decision of the General court does not come as a surprise. The decisive factors for the finding that there was likelihood of confusion were the overall impression of the signs and the conclusion that a low degree of phonetic similarity could not outweigh the visual differences. On a factual level, an applicant might influence the outcome of the assessment of the overall impression of marks if it can prove that the public generally comes into contact with the goods aurally, in cases where the aural similarity is higher than the visual similarity.

Florian Schwab, Boehmert & Boehmert, Munich