OHIM decision annulled due to overestimation of visual differences

European Union
In Laboratorios Byly SA v Office for Harmonization in the Internal Market (OHIM) (Case T-514/08, April 14 2010), the General Court has annulled a decision of the Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the trademark BILLY’S PRODUCTS and the earlier marks BYLY.  
On January 28 2005 an individual, Vasileios Ginis, filed an application for the registration of the word and device mark BILLY’S PRODUCTS for goods in Class 3 of the Nice Classification. The mark consisted of the stylized term 'Billy’s' in large, red characters, with the word 'products' written underneath in small, blue characters.
On December 14 2005 Spanish company Laboratorios Byly SA lodged an opposition against the application based on its earlier Community registrations for the word mark BYLY (in capital letters and in normal script) for goods and services in Classes 3, 5 and 35. Both the Opposition Division and the Second Board of Appeal of OHIM rejected the opposition, finding that although the goods were identical or similar, the marks were dissimilar from a visual and conceptual point of view. Byly appealed to the General Court.
First, the court pointed out that 'Billy’s' was the dominant element of the mark applied for, while the word 'products' was negligible due to:
  • its size;
  • its position in the mark; and
  • its weak distinctiveness.
From a visual point of view, the court held that the marks were similar. The court recognized that the public usually pays greater attention to the first part of trademarks, which was different in the present case ('bi' and 'by'). However, the court found that the marks at issue shared a majority of letters. It emphasized that the public would have to carry out a detailed comparison of the marks in order to notice their differences - and the public rarely has the possibility to compare trademarks directly.
From a phonetic point of view, the court stated that the marks were highly similar (in contrast, the Board of Appeal had found that the marks had an average degree of similarity). The court pointed out that the pronunciation of 'Billy’s' and 'Byly' would be similar in Italian, French and English. The possessive form in 'Billy’s' was held to be negligible because it was almost inaudible. The addition of the word 'products' did not alter this finding, as its degree of distinctiveness was low.
From a conceptual point of view, the court held that the degree of similarity between the marks was low. The earlier marks consisted of an invented term, while the mark applied for would be seen as referring to the products of a company or person called Billy. Moreover, the English word 'products' would be understood by the average EU consumers.
Based on the findings that the goods were identical or similar, and that the marks were similar visually and phonetically, the General Court ruled that there was a risk of confusion, as the average European consumer was likely to believe that the goods covered by the marks originated from the same company. The board's decision was thus annulled.
Interestingly, it seems that the court found that first names have an average degree of distinctiveness, even though such names are usually afforded a very limited scope of protection. Moreover, the graphic elements of the mark applied for would normally have favoured a finding of dissimilarity.
Finally, it is disturbing that the court took into account the term 'products' when carrying out the conceptual comparison, but neglected it with regard to the visual and phonetic comparison.   
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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