Phonetic similarity of less importance where consumers usually perceive marks visually

In Eckes-Granini Group GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-487/12, December 11 2013), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that there was no likelihood of confusion between the word mark GRANINI and the word-and-device mark PANINI.

Italian company Panini SpA filed an application for the registration of the figurative Community trademark PANINI for beverages in Class 32 of the Nice Classication, including beers and non-alcoholic drinks.

German company Eckes-Granini Group GmbH lodged an opposition based on the earlier Community word mark GRANINI and the earlier German word mark GRANINI, which both covered "non-alcoholic beverages, fruit drinks and fruit juices" in Class 32. The Opposition Division of OHIM dismissed the opposition in its entirety. The Second Board of Appeal agreed with the Opposition Division's decision and dismissed the appeal. In particular, the Board of Appeal found that the dissimilarities between the trademarks outweighed the slight similarities between them, so that there was no risk of confusion.

The General Court confirmed the Board of Appeal's finding as to the lack of a likelihood of confusion. The board's finding that the goods were either identical or similar was not disputed, and the court confirmed that the overall impression of the trademarks excluded a risk of confusion. In particular, the court found that there was a low degree of phonetic similarity between the marks, but held that the marks were clearly dissimilar from a visual point of view and that they differed - or could not be compared - from a conceptual point of view. The court found that the visual and conceptual dissimilarities outweighed the slight phonetic similarities.

This decision once again highlights that the EU institutions increasingly focus on the figurative elements of word-and-device trademarks and do not automatically regard the word element as the dominant one. Further, it confirms that a finding of similarity in one respect (here, phonetic similarity) does not automatically result in a finding that the trademarks are similar. On the contrary, the court pointed out that it is important to balance the phonetic, visual and conceptual aspects carefully, and that these different aspects do not always have the same weight.

According to the court, the question of which aspect is the most important in a particular case depends on, among other things, the goods and services concerned. For example, the visual similarities will generally have more weight in the beverage sector, as consumers look at the labels of the products when buying them in supermarkets. Moreover, when ordering a beverage in a bar, consumers have the possibility to inspect the bottle prior to purchase. Finally, when ordering non-alcoholic drinks, such as juices, consumers will not usually use the trademark, but will merely give the generic name of the beverage (eg, an "orange juice").

Based on the above arguments, the court found that there was no likelihood of confusion between the marks, despite the low degree of phonetic similarity between them.

Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich