Laboratorios Byly, S.A. v OHIM; Vasíleios Gínis
The EU General Court
Review based on Spanish language judgment (unofficial English translation used).
In this recent judgment, the EU General Court (“GC”) upheld an appeal by Laboratorios Byly, SA (“Byly”) against the decision of the OHIM Board of Appeal to reject its opposition of the registration of the figurative mark, BILLY’S Products (see mark below).
Mr Gínis (an individual) applied to register the figurative mark “BILLY’S Products” as a Community trade mark. The application was filed for goods in class 3 including cleaning and laundry solutions, perfumes, essential oils, hair products, cosmetics and oral hygiene products.
However, Byly filed an opposition to the application, based on its earlier Community word marks BYLY (which was registered for goods in class 3) and byly (which was registered for goods in classes 3 and 5 and services in class 35). The objection related to all goods protected by the earlier marks, including, in particular, personal hygiene products. The opposition was based on the claim that the earlier marks were similar to the mark applied for and that there thus existed a likelihood of confusion on the part of the public (Article 8(1)(b) of the Council Regulation (EC) No 40/94 (the “Regulation”)).
The OHIM Opposition Division rejected the opposition under Article 8(1)(b) of the Regulation. Byly appealed this decision. The OHIM Board of Appeal dismissed Byly’s appeal against this decision, holding that the requirements of Article 8(1)(b) of the Regulation had not been met. It held that, although the goods in question were identical, the visual and conceptual differences between the marks were significant enough to exclude any risk of confusion. The Board of Appeal held that the aural similarity between the marks was of minor importance; products such as these are usually marketed so that, when purchasing the product, the consumer perceives the mark in a visual way. Byly appealed to the GC.
Byly’s Grounds of Appeal
Byly had one ground of appeal only, arguing that the Board of Appeal had wrongly ruled out any risk of confusion under Article 8(1)(b) of the Regulation.
The GC’s Findings
Comparison of the marks
Neither party disputed the Board of Appeal’s finding that the goods for which both marks were registered were identical. The GC held that the Board of Appeal had been correct in deciding that the relevant public was the average European consumer, deemed to be well informed and reasonably observant and circumspect.
The GC stated that the global assessment of a likelihood of confusion must be based on the overall impression created by the visual, aural and conceptual similarity of the marks, taking particular account of distinctive and dominant elements (Case C-251/95, SABEL). The average consumer normally perceives the mark as a whole, and does not analyse its different elements (Case C-334/05P, OHIM/Shaker). However, in some cases, the consumer’s perception of the mark can be dominated by one or more of the mark’s elements (Case C-334/05P, OHIM/Shaker). Only if all the other elements of the mark are negligible can the assessment of the marks’ similarity be based exclusively on the dominant element (Case C-193/06P, Nestlé/OHIM).
The dominant element
The GC agreed with the Board of Appeal’s finding that the dominant element of the mark applied for was “BILLY’S”. The term “products” was negligible; it was presented in small, lower case letters and was not distinctive due to its descriptive nature. The assessment of the similarity of the marks could be made on the basis of the dominant element of the mark applied for.
The GC held that the marks were visually similar, and that the Board of Appeal was incorrect in concluding that there were considerable differences between the marks. As the earlier marks were word marks, the figurative elements of the mark applied for remained secondary to its verbal elements when assessing the likelihood of confusion. The mark applied for had all of the letters found in the earlier marks and started with the same letter, “b”. The dominant element of the mark applied for and the earlier marks ended in the same letters, “ly”. The difference between the letters “l” and “ll” and the inclusion of the element “’s” after “BILLY” was not sufficiently significant to constitute a considerable difference from the earlier marks. The average consumer would not conduct a detailed analysis of the differences, and would find the marks as a whole visually similar.
The GC conducted a comparison of the earlier marks with the dominant element of the mark applied for; the word “products” was not considered. The GC concluded that the marks were phonetically similar. The way in which “byly” and “billy” are pronounced are the same in several languages: “y” and “i” and “l” and “ll” are pronounced in the same way in French and English. Further, the earlier marks and the dominant element of the mark applied for both consisted of two syllables each and had the same cadence.
The GC held that, although there were conceptual differences between the marks, these differences were weak, particularly when perceived by a non-Anglophone consumer. The earlier marks featured an invented word, with no conceptual meaning; in contrast, the name “Bill” was renowned in the European Union. However, despite this renown, non-Anglophone consumers could not be expected to know that “Billy” is a diminutive of “Bill” or that “Billy’s Products” means products belonging to Billy. As a result, the differences were not significant.
Overall similarity of the marks
The GC held that the marks had some visual similarity, an important phonetic similarity and a weak conceptual difference. The GC stated that, in some cases, where the sign has a clear and specific conceptual meaning which can be grasped by the public immediately, conceptual differences can override visual and phonetic similarities (Case T-336/03, MOBILIX). However, this was not the case on these facts, and the conceptual differences could not neutralise the phonetic and visual similarities. The GC held that the marks could be considered to be globally similar.
Risk of confusion
The GC found that, because the goods in question were identical and the marks were broadly similar, there was a likelihood of confusion between the marks. The average European consumer could have believed that goods bearing the mark applied for had the same commercial origin as goods bearing the earlier marks. This conclusion was supported by the fact that, as the products which bore the marks were generally sold on supermarket and pharmacy shelves (rather than over-the-counter), in order to make the purchase, the consumer was likely to perceive the mark in a predominantly visual way.
This case demonstrates that, where a dominant element of a mark exists, other elements of the mark, if considered negligible, may not be considered when conducting a comparison of the conflicting marks.
Furthermore, where the earlier marks are word marks, and the mark applied for is figurative, the figurative elements of the mark will not be examined when comparing the conflicting marks.
In this decision, the GC stressed the fact that members of the relevant public do not tend to examine each element of the mark individually, but tend to perceive the mark as a whole. Further, members of the relevant public rarely undertake a direct comparison of the conflicting marks but normally rely upon the “imperfect image” of the marks retained in their memories (Case C-342/97, Lloyd Schuhfabrik Meyer). Thus, this case serves as a reminder that minor differences will not serve to reduce the likelihood of confusion when there are stronger similarities between the marks.