In this case review, which was first published in the June issue of the ITMA review, we look at case T-26/13 (dm-drogerie markt GmbH & Co KG v OHIM, CJEU, General Court (Third Chamber), 12 February 2014) and the assessment of likelihood of confusion between the trade marks CALDEA and BALEA.

On 22 July 2010, Semtee filed a Community Trade Mark application for the word mark CALDEA for, inter alia, “soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” (class 3), “consultancy relating to business management of leisure premises, non-medical, making use of water, in particular heated water, for relaxation, leisure, physical maintenance of and keeping fit in the field of health” (class 35) and “personalised consultancy, advice and assistance relating to the operation of a leisure centre, non-medical, relating to water, in particular heated water, for relaxation, leisure, physical maintenance and keeping fit in the field of health” (class 44).

The application was published on 20 September 2010 and dm-drogerie markt GmbH & Co KG (“dm-drogerie”) filed a notice of opposition against registration of the mark for the above-mentioned goods and services based on its earlier international trade mark No 0894004, BALEA, in classes 3, 5 and 8 (covering, inter alia, “soaps, perfumeries, essential oils, preparations for hygienic and beauty use”) designating protection in the European Union (EU). The Applicant claimed infringement under Article 8(1)(b) of Council Regulation (EC) No 207/2009.

The Opposition Division rejected the opposition and dm-drogerie filed a notice of appeal with OHIM against the decision.

The appeal

The First Board of Appeal of OHIM (the Board) assessed the likelihood of confusion, bearing in mind the likelihood of association between the marks, to ascertain whether the application should proceed to registration.

The Board considered the average consumers in all European Member States, who were judged to be reasonably well informed and reasonably observant and circumspect. In accordance with settled case law, the Board assessed the marks as a whole, taking into account the visual, phonetic and conceptual aspects, considering their distinctive and dominant elements.

Decision

While there may exist some visual similarities on account of the coincidence of the two-letter sequences, _AL and _EA, in the marks, there are sufficient differences between the marks
when perceived as whole.

Phonetically, the Board found that the marks had a low degree of similarity, irrespective of the fact that they contained the same number of syllables and sequence of vowels.

The marks were not conceptually similar as the mark applied for has no meaning and the earlier mark has a meaning of which only a small population of the EU is aware.

Overall, the marks were visually and conceptually dissimilar and had a low degree of phonetic similarity. The Board held that the average consumer will pay more attention to the visual perceptions of the signs. Further, the degree of phonetic similarity should not be given much weight unless contact between the goods of interest and the public is established by means of sound. As a consequence, the marks were dissimilar when considered in their entirety.

This appeal was dismissed as a likelihood of confusion did not exist, even for the identical goods in class 3. The decision was not affected by the alleged reputation of the earlier mark, particularly in Germany, nor was such evidence assessed as the signs had been found to be dissimilar overall.

While this decision is, perhaps, unsurprising, it provides a useful example of the straightforward application of settled case law concerning the assessment of a likelihood of confusion.

Eleni Mezulanik  9 June 2014