Hipp v OHMI - Nestle (Bebio) (Community trade mark) [2012] EUECJ T-41/09 (28 March 2012)

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(Community trade mark - Opposition proceedings - Application for Community word mark Bebio - Earlier Community word mark and international word mark BEBA - Partial refusal of registration - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

1 On 5 March 2003, the applicant - Hipp & Co KG ('Hipp' or 'the applicant') - filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The goods for which registration was sought are in Classes 5, 29, 30 and 32 in the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

4 The Community trade mark application was published in Community Trade Marks Bulletin No 28/2004 of 12 July 2004.

5 On 11 October 2004, the intervener, Société des Produits Nestlé S.A. ('Nestlé') filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier word mark BEBA which was registered, on 12 September 1955, in accordance with international arrangements under No 187436, covering goods in Classes 5, 29 and 30 corresponding, for each of those classes, to the following description:

7 The opposition was also based on the Community word mark BEBA, registered under No 3043387, covering goods in Classes 5, 29 and 30 corresponding, for each of those classes, to the following description:

8 The opposition was based on all the goods covered by the earlier marks and was directed against all the goods covered by the trade mark applied for.

9 The grounds put forward in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).

10 By decision of 27 September 2007, the Opposition Division upheld the opposition for the goods in Classes 5, 29 and for some of the goods in Class 30, on the ground that there was a likelihood of confusion. It rejected the opposition with regard to all the goods in Class 32, as well as the 'tea' and 'tea-based beverages' in Class 30. It also rejected the opposition based on Article 8(5) of Regulation No 40/94, finding that Nestlé had not proved the extent, duration or nature of use of the earlier international registration of its word mark BEBA, in Germany. In view of the visual and phonetic similarity of the signs at issue, and their conceptual similarity, at least in Spanish, the Opposition Division concluded that there was a likelihood of confusion.

11 On 15 November 2007, Hipp filed an appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.

12 By decision of 25 November 2008 ('the contested decision'), the Second Board of Appeal of OHIM dismissed Hipp's appeal in its entirety. It found, essentially, that the relevant public was composed of average consumers in the European Union and noted that, although products such as food for infants and young children are purchased with a special degree of consideration, these goods were everyday items which were not particularly expensive or 'risky'. The Board of Appeal also endorsed the view of the Opposition Division that the goods in Classes 5, 29 and 30, with the exception of 'tea' and 'tea-based beverages' in Class 30, were identical or similar. Regarding the comparison of the signs, the Board of Appeal found that they were phonetically and visually similar due to the 'beb' element. Conceptually, it considered that, at least for Spanish-speaking consumers, there was a degree of similarity, since the two signs referred to the Spanish word 'beber' (to drink). The Board of Appeal concluded that, in view of the similarity of the signs at issue and the fact that the marks covered identical or similar goods, the relevant public was likely to believe that the goods concerned came from the same undertaking or, as the case may be, from undertakings that were economically linked; consequently, there was a likelihood of confusion between the marks.

17 The applicant raises a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 40/94.

18 The applicant submits, in essence, that with regard to the category of goods considered to be products with certain potential hazards, the relevant public is composed of consumers who exhibit a higher than average degree of attention. It also submits that the signs at issue are visually and phonetically dissimilar and that, conceptually, they are devoid of any specific meaning. According to it, the earlier mark is of weak distinctive character, so that it cannot be concluded that there is a likelihood of confusion between the marks at issue.

20 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) and (iii) of Regulation No 40/94 (now Article 8(2)(a)(i) and (iii) of Regulation No 207/2009), 'earlier trade marks' means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

21 In accordance with settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

22 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T-316/07 Commercy v OHIM - easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

23 Where the protection of the earlier trade mark extends to the entirety of the Community, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods at issue in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 40/94 exists in a part of the Community (see Joined Cases T-81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM - Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 76 and the case-law cited).

24 It is in the light of the foregoing considerations that the assessment made by the Board of Appeal of the likelihood of confusion between the signs at issue must be examined.

25 In accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (see Case T-256/04 Mundipharma v OHIM - Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).

26 The applicant submits, in essence, that the relevant public is composed, in the present case, of average consumers of foods for babies and young children but who exhibit a higher than average degree of attention in so far as the goods at issue, that is, foods for babies and young children, fall within the category of products with certain potential hazards, as pharmaceutical or other health-related goods do.

28 First, as OHIM noted, the degree of attention to which the applicant refers concerns only 'foods for babies and infants' in Class 5 and not the food and drink products in Classes 29 and 30, so that it is not disputed that those goods are intended for the general public, which is deemed to be composed of consumers who are reasonably well-informed and reasonably observant and circumspect.

29 As regards 'foods for babies and infants' in Class 5, contrary to the assertion of the applicant, those goods cannot be considered to be products with certain potential hazards, like pharmaceutical products, as they are not perceived as medicines nor are they obtained on medical prescription, even though some formula milks may be sold in pharmacies. In any event, whereas, as the applicant claims, the parents of babies or young children have a higher degree of attention when purchasing those goods because of the importance they attach to nutrition and health of babies, it should be noted, however, in view of the extensive range of 'foods for babies and infants' that while the group of average consumers for that category of goods, as identified, will also include careful parents, it will not in any case consist exclusively of such consumers (judgment of 16 September 2009 in Case T-221/06 Hipp & Co v OHIM - Laboratorios Ordesa (Bebimil), not published in the ECR, paragraph 40).

30 It follows that the Board of Appeal was justified in holding that the relevant public was composed of average consumers who are reasonably well-informed and reasonably observant and circumspect. Given that the earlier trade mark is a Community trade mark, the relevant territory is that of the European Union, as the Board of Appeal stated in paragraph 16 of the contested decision.

31 The parties do not contest the Board of Appeal's finding that the goods in question are identical or similar.

32 The global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and case-law cited).

33 The case-law also establishes that two marks are similar where, from the point of view of the relevant public, they are at least partially identical in one or more relevant aspects, that is, visually, phonetically or conceptually (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23; see also, by analogy, Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30).

34 In the present case, it should be noted that the earlier trade mark is the word mark BEBA, whereas the trade mark applied for is the word mark Bebio.

35 First, visually, the applicant considers that the signs at issue are different in so far as only their first three letters are identical, that is, the letters 'b', 'e' and 'b', and their endings are different. According to Hipp, the differences between those signs, although slight, are all the more noticeable as those signs are short.

36 That argument cannot be accepted. As OHIM noted, the first three letters of the signs at issue are identical and the only difference between those signs is the final letter 'a' for the earlier mark and the letters 'i' and 'o' for the mark applied for. However, the different endings of the signs at issue are not enough to offset, from the point of consumers, the visual similarity of the root 'beb' (see, to that effect, T-88/10 Inter IKEA Systems v OHIM - Meteor Controls (GLÄNSA) [2011] ECR I-000, paragraph 31). Futhermore, it must be pointed out that the consumer normally attaches more importance to the first part of words (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM - González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 81, and Case T-112/03 L'Oréal v OHIM - Revlon (FLEXI AIR) [2005] ECR II-949, paragraph 64). It follows that the component 'beb' of the signs at issue is likely, in the context of an overall visual impression, to attract more attention than the final components 'a' and 'io'. Accordingly, there is an average degree of visual similarity between the signs at issue.

37 Second, the applicant submits that the signs at issue are different phonetically, because the earlier mark is composed of four letters, two syllables and the vowel sequence 'e-a', whereas the mark applied for is composed of five letters, three syllables and the vowel sequence 'e-i-o'. According to the applicant, the two signs being very short, the endings will not be overlooked in pronunciation.

38 In that regard, it must be observed that the mark applied for consists of two or three syllables, depending on their pronunciation in the languages of the European Union, and the earlier mark consists of two. Therefore, the signs at issue may be pronounced differently. However, because the first syllables, to wit 'be', of those signs are identical and are pronounced in the same way, there is a degree of phonetic similarity between the signs taken as a whole (see, to this effect, judgment of 27 September 2007 in Case T-418/03 La Mer Technology v OHIM - Laboratoires Goëmar (LA MER), not published in the ECR, paragraph 123, and Case T-460/07 Nokia v OHIM - Medion (LIFE BLOG) [2010] ECR II-89, paragraph 56).

39 Third, the applicant claims that the signs at issue are devoid of any specific meaning conceptually, but allude to the word 'baby'. With regard to the goods covered by the earlier mark BEBA, namely, milk formula, in particular, that mark describes the nature of the product and cannot, 'as a matter of law, form the basis' of a conceptual similarity.

40 Clearly, the Board of Appeal was right to consider that, at least for the Spanish-speaking public, there was a conceptual similarity between the signs at issue. It is undisputed that the word 'beba' is the imperative of the verb 'to drink' in Spanish and that the word 'bebio' is the third person singular, past tense, of that verb in that language. Accordingly, those signs refer, for Spanish speaking consumers, to the action of drinking. In that regard, it should be noted that the unitary character of the Community trade mark means that an earlier Community trade mark can be relied upon in opposition proceedings against any application for registration of a Community trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008 in Case C-514/06 P Armacell v OHIM, not published in the ECR, paragraph 57).

41 That conclusion cannot be undermined by the argument of the applicant that the signs at issue do not allude to the Spanish verb 'beber' (to drink) but that the majority of consumers will perceive those signs as making reference to 'baby' in many languages of the European Union.

42 In that connection, it should be noted that the English word 'baby' is understood even by a non-English speaking consumer, inter alia, by a Spanish consumer (see Bebimil, paragraph 29 above, paragraph 62 and the case-law cited). Furthermore, having regard to the dictionary definitions setting out the translation of the English word 'baby' in the various languages of the European Union, submitted by the applicant, the French word 'bébé' is translated by words that are very close phonetically in Italian (bebè), Portuguese (bebê), Spanish (bebé) and in Danish, Swedish and Dutch (baby). However, it should be noted that, in the present case, the signs at issue do not include the English word 'baby' or the French word 'bébé' but a fanciful word, which is even more remote and without any clear and specific meaning, that is to say, 'beb'. Moreover, this concerns only the beginning of the signs and not their entirety, whereas the conceptual similarity between the signs at issue must be assessed on the basis of the evocative force that may be recognised in each of them taken as a whole (MUNDICOR, paragraph 90). Therefore, the signs at issue have a certain conceptual similarity for the Spanish-speaking consumer, who will associate the two marks with the Spanish verb 'beber' (to drink).

43 With regard to the applicant's argument that the component 'beb' has a weak distinctive character and that there are many co-existing marks on the market beginning with that component, this must be dismissed, as is apparent from paragraphs 50 to 53 below.

44 In the light of the above, the Board of Appeal was right to consider that the signs at issue have an average degree of visual similarity, are phonetically similar and have a certain similarity for the Spanish-speaking consumer, who will associate the signs at issue with the Spanish verb 'beber' (to drink).

45 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and VENADO with frame and Others, paragraph 74).

46 The applicant claims that the earlier mark BEBA has an inherently weak distinctiveness and that it can only claim a narrow scope of protection in so far as the component 'beb' clearly alludes to the words 'bébé' and 'baby'. It contends that a large number of marks begin with the letter combination 'beb', examples of which have been submitted by the applicant. According to Hipp, having regard to the weak distinctiveness of the initial component 'beb' in the two marks, the other, distinctive and dominant components - in the present case, the respective endings 'a' and 'io' - have to be taken into account to a greater degree.

47 First, the Court, like the Board of Appeal, finds that the words 'bebio' and 'beba' do not have a specific meaning for the non-Spanish-speaking public and, contrary to the applicant's claims, they do not clearly refer to the concept of a baby (see paragraphs 41 and 42 above).

48 Furthermore, that conclusion is not invalidated by the argument that the word 'beba' means 'baby' in the Croatian language which, according to the applicant, is a language understood by a large number of consumers in the European Union because, as Hipp itself admits, the Croatian language is known to only a limited part of the relevant public, namely certain consumers in Germany, Austria and Italy. The mere fact that the word 'beba' means 'baby' in the Croatian language and refers, in that language, to a characteristic of the goods at issue is not sufficient to establish and define a particular category of consumers targeted by the contested trade mark application (Case T-286/02 Oriental Kitchen v OHIM - Mou Dybfrost (KIAP MOU) [2003] ECR II-4953, paragraph 33).

49 In addition, it must be held that such weak distinctiveness, assuming it to have been proved, would only concern 'food for babies and infants' in Class 5 and not all the goods for which the mark is applied for and falling within Classes 29 and 30. It should be noted in that connection that, according to case-law, the assessment of the distinctiveness of a sign must be carried out having regard to the products which form the basis of the opposition (Case T-186/02 BMI Bertollo v OHIM - Diesel (DIESELIT) [2004] ECR II-1887, paragraph 54).

50 With regard to the evidence submitted by the applicant to show that the component 'beb' has weak distinctiveness, as it is used in many earlier marks, it must be noted that that evidence is not sufficient to prove that that component has become merely weakly distinctive as a result of its frequent use in the area concerned.

51 The evidence submitted by the applicant does not indicate the territories in which the marks consisting of the component 'beb' are actually used nor the marks in which the word 'baby' is used descriptively (see, to that effect, Case T-135/04 GfK v OHIM - BUS (Online Bus) [2005] ECR II-4865, paragraph 68, and judgment of 16 September 2009 in Case T-400/06 Zero Industry v OHIM - zero Germany (zerorh+), not published in the ECR, paragraph 73).

52 That conclusion is not invalidated by the judgment of the Bundespatentgericht (Federal Patent Court, Germany) of 30 November 2000, which found that, in the sector of food for young children, there were many marks containing the components 'beb' or 'bebe' at the beginning of the sign, because the Community trade mark regime is an autonomous system with its own set of objectives and particular rules and it applies independently of any national system. Accordingly, OHIM and, as the case may be, the judicature of the European Union are not bound by a decision given in a Member State. Such decisions may, nevertheless, provide analytical support for the registrability of a sign as a Community trade mark. It should be noted, in that regard, that the applicant does not rely on the findings of fact on which the German court made its assessment which, in any event, concerns only German consumers.

53 It follows that, in the absence of evidence in the file to establish that the component 'beb' is weakly distinctive, there is no reason to depart from the view that the consumer normally attaches more importance to the first part of words (see, to this effect, MUNDICOR, paragraph 36 above, paragraph 81, and FLEXI AIR, paragraph 36 above, paragraph 64).

54 With regard to the question whether OHIM was bound by previous decisions, it is clear from the case-law that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. While, having regard to the principles of equal treatment and sound administration, OHIM is obliged to take into account the decisions already taken in respect of similar applications and to consider with particular care whether it should decide in the same way or not, the application of those principles must none the less be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be rigorous and complete, in order to prevent trade marks from being improperly registered. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue comes within a ground for refusal (see, to that effect, Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-0000, paragraphs 73 to 77 and case-law cited, and Case T-220/09 Ergo Versicherungsgruppe v OHIM - Société de développement et de recherche industrielle (ERGO) [2011] ECR I-0000, paragraph 45).

55 In the present case, as is apparent from all the foregoing considerations, the Board of Appeal rightly held that the relative ground for refusal laid down in Article 8(1)(b) of Regulation No 40/94 applied to the trade mark applied for, so that the applicant cannot successfully rely on the previous decisions of OHIM to invalidate that conclusion.

56 In any event, it should be noted that the finding of a weak distinctive character for the earlier trade mark does not preclude a finding of a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among many involved in such assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see Case T-134/06 Xentral v OHIM - Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70 and the case-law cited). Even if the component 'beb' can be considered to be descriptive of the goods in question and, therefore, the earlier mark is itself considered to be weakly distinctive, the degree of similarity between the goods covered by the marks at issue and the degree of similarity between the marks themselves, considered cumulatively, are sufficiently high to justify the conclusion that there is a likelihood of confusion (see, to this effect, judgment of 28 June 2011 in Case T-475/09 ATB Norte v OHIM - Bricocenter Italia (Affiliato BRICO CENTER), not published in the ECR, paragraph 64).

57 It follows from all of the foregoing that, in the circumstances of the present case, there is a likelihood of confusion between the marks at issue. Given that the goods concerned are similar, or indeed identical, and given the degree of similarity of the signs at issue, particularly from the conceptual point of view, the Board of Appeal rightly held that there was a likelihood of confusion between the marks at issue.

58 The sole plea in law put forward by the applicant must therefore be rejected and, in consequence, the action must be dismissed in its entirety.

59 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Hipp v OHMI - Nestle (Bebio) (Community trade mark) [2012] EUECJ T-41/09 (28 March 2012) URL: http://www.bailii.org/eu/cases/EUECJ/2012/T4109.html Cite as: [2012] EUECJ T-41/9, [2012] EUECJ T-41/09

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