The Court of Justice of the European Union (General Court) ruled on 25 October 2012 in riha Richard Hartinger Getränke GmbH & Co. Handels-KG v. OHIMabout the likelihood of confusion between a word mark and a mark containing both word and figurative components. The case serves as a helpful reminder that, in the presence of a strong similarity between the words in two marks, the figurative aspect in a later mark needs to be prominent enough to make confusion between that mark and the earlier word mark unlikely.

History of the proceedings

In 2006, riha Richard Hartinger Getränke submitted an application for registration of a Community trade mark, in class 32 (non-alcoholic drinks, fruit drinks and fruit juices) of the Nice Classification of Goods and Services. The mark is comprised of the following figurative sign:

In 2007, Lidl Stiftung & Co. KG, holder of an earlier word mark „Vitafit“, filed an objection to the registration. “Vitafit” had been registered as a mark in Germany since 1983 for “juice, nectars and fruit drinks” in Class 32. The opposition is based on Article 8, paragraph 1 (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark:

“Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not 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.”

In September 2009 the Opposition Division upheld the opposition, on the grounds of the genuine use of the earlier German trademark, identity between the goods in question, similarity between the signs, and the resulting likelihood of confusion. riha Richard Hartinger Getränke lodged an appeal with OHIM. On 5 October 2010 the Fourth Board of Appeal of OHIM dismissed the appeal. In December of the same year, riha Richard Hartinger Getränke brought action before the Court, seeking annulment of the decision of the board of appeal.

Decision of the Court

This post first presents the responses of the Court in the judgment of 25 October 2012 to the applicant’s substantive claims, before turning to the responses to procedural pleas. The judgment of the Court itself is structured in a different (opposite) order.

Substantive law claims

The substantive claims by the applicant, riha Richard Hartinger Getränke, concerned: (1) the identity of the goods covered by earlier and by the applied trademark, (2) similarity between these two signs [marks] at issue, and (3) existence of a likelihood of confusion.

The applicant stated that the products in question are not the same, because they have a different order number in class 32 of the Nice Agreement. The General Court responded that product classification is performed exclusively for administrative purposes and the applicant cannot claim that the products in question are not the same just because they have a different order number within class 32.

As to the similarity between the marks, the court set forth the general proposition that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. The relevant aspects may be visual, aural and conceptual. The Court found that the two marks are similar, because they are conceptually identical and have an average degree of similarity in the visual and aural aspects.

  • With regard to visual aspects, the dominant elements of the marks – “vital fit” and “vitafit” – have a strong visual similarity, the only difference between them being the presence of the letter “l” in the mark applied for registration. Figurative elements in the mark “vital & fit” do not significantly influence the overall visual impression of the mark, because it is barely perceptible that the letter “i” in both words is represented as a straw in a glass, and the ampersand (“&”) is thinner than the rest of the text.
  • There is an averagedegree of aural similarity between the two marks, insomuch as both begin with the same syllable “vi”, followed by a nearly identical syllable (“ta” or “tal”), and end with the same syllable ‘fit’. In addition, as the Court explained, “the difference in pronunciation due to the presence of the letter ‘l’ is barely audible, and the ampersand, pronounced “und” in the middle of the mark applied for is not enough to remove the phonetic similarity of the marks.”
  • Finally, on a conceptual level, both signs reflect the message of a ‘healthy life, conveyed by the presence of the words “fit” and ”vita”/“vital.”

Having thus found that the goods at issue were identical and marks similar, the Court was one step from finding a likelihood of confusion within the meaning of Article 8, paragraph 1 (b), of the Trademark Regulation. The applicant’s argument against such finding was that the inherent distinctive character of the earlier mark “Vitafit” was low, and that this should preclude a finding of a likelihood of confusion. The Court, however, responded that ”even in the presence of an earlier mark of a weak distinctive character, there may be a risk of confusion, particularly because of the similarity of the signs and goods or services covered.” It held that the intervener had provided sufficient evidence of use of the earlier mark, which outweighed its low inherent distinctiveness.

Procedural claims

The court addressed a claim by the applicant that the Fourth Board of Appeal infringed upon rules of procedure by (1) not itself examining the supposed aural similarity of the marks, (2) not taking into account decisions of OHIM and of the Court to which the parties referred, and (3) not making it clear whether it did in fact take into account only German commercial circles (and their views) as the “relevant public”.

With regard to this first procedural plea, the Court noted that the contested decision of the Board of Appeal expressly referred to the assessment of the aural (phonetic) similarity between the marks made by the Opposition Division. The assessment of the Opposition Division, in turn, should be considered part of the motivation of the contested decision. As the Opposition Division had in fact explained the reasons for which it considered that the marks had an average degree of phonetic similarity, the Court rejected the first plea.

With regard to the second ground of the claim concerning the procedure, the Court invoked the oft-repeated (as in paragraph 54 here) stance that the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of Council Regulation on the Community trade mark, as interpreted by the Courts of the European Union, and not on the basis of a previous practice of OHIM.

As to the third plea, the Court stated that the Board of Appeal had in fact sufficiently identified the relevant public, again by referring to the decision of the Opposition Division. The latter had specifically identified the relevant territory as Germany.