Goods in Classes 30 and 32 and services in Class 43 held to be similar to a certain degree

European Union

In Yoo Holdings Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-562/14, June 4 2015), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the marks YOO and YO.

This case concerned an application by Yoo Holdings Ltd to register the word mark YOO in respect of services falling, among other things, within Class 43 of the Nice Classification, such as “restaurant services, bar services, café, cafeteria, canteen, snack bar and catering services; lounge and bar services; services for providing food and drink”. The application was opposed by Eckes-Granini Group GmbH on the basis of its earlier German word mark YO and its international registration for the word mark YO designating the European Community. The goods covered by the earlier trademark registrations corresponded to the following description:

  • Class 29: "meat, fish, poultry and game; meat extracts; frozen, preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces (compotes); eggs, milk and milk  products; edible oils and fats".
  • Class 30: "sugar, rice, tapioca, sago, flour and preparations made from cereals including cereal bars; bread, pastry and confectionery, filled and unfilled chocolates and all other chocolate products". 
  • Class 32: "beers; mineral waters and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages".

On April 19 2013 the Opposition Division of OHIM rejected the opposition. On April 24 2013 Eckes-Granini filed a notice of appeal with OHIM. By a decision of April 29 2014 the Second Board of Appeal of OHIM annulled in part the Opposition Division’s decision and refused to register the mark for “restaurant services, bar services, café, cafeteria, canteen, snack bar and catering services; lounge and bar services; services for providing food and drink” in Class 43.

Yoo Holdings brought an action before the General Court, claiming that the Board of Appeals had made an error of assessment when it found that:

  • there was a certain degree of similarity between the goods and services at issue;
  • there was a similarity between the signs at issue; and
  • there was a likelihood of confusion.

The court first considered the Board of Appeal’s assessment of the similarity between the goods and services at issue. According to the court, the Board of Appeal was right to find that preparations made from cereals, pastry and confectionery, filled and unfilled chocolates and all other chocolate products in Class 30, as well as fruit drinks and fruit juices in Class 32, were complementary to services in Class 43, as such goods are used and offered in the context of restaurant, bar, café, cafeteria, canteen, snack bar and catering services. Those goods were therefore closely related to those services. The court noted that those services can be offered in the same places as those in which the goods in question are sold. For example, establishments which provide restaurant, catering or bar services offer non-alcoholic drinks to their customers. In the same way, it commonly happens that pastries are offered for sale in places which provide food and drink. 

Furthermore, it is common knowledge that providers of restaurant or catering services often make their own pastries or chocolate products. Conversely, bakers or pastry chefs have developed catering services and snacks, which include, in particular, pastries and chocolate products. It is also clear that providers of fast food or tea or coffee shops sell pastries, chocolate products and non-alcoholic beverages under their own trademarks. Accordingly, the goods and services at issue may come from the same undertakings or from economically-linked undertakings. In the light of the above, consumers may think that the responsibility for the manufacture of those goods and the provision of those services lies with the same undertaking.

The court held that, given the similarity of the goods/services covered by the marks at issue, the strong similarity between the signs and the normal level of attention of the relevant public, the Board of Appeal had been correct in finding that there was a likelihood of confusion between the mark applied for and the earlier marks.

This case is a demonstration that certain goods in Classes 30 and 32 and services for providing food and drink in Class 43 can be found similar to a certain degree.

Anna Zakrocka, Patpol, Warsaw

Get unlimited access to all WTR content