JANUARY 2014: GENERAL COURT OF THE EUROPEAN UNION - 18 NOVEMBER 2013 - CASE T-377/10 - PREPARADOS ALIMENTICIOS VERSUS OHIM (RILA FEINKOST-IMPORTE) – "JUMBO VERSUS JAMBO AFRIKA"
Rila Feinkost-Importe filed a Community trade mark application for JAMBO AFRIKA to cover food products in Classes 29 and 30 and alcoholic beverages in Class 33.
Preparados Alimenticios filed a notice of opposition against the trade mark application on the grounds of nine Community trade marks and three Spanish trade marks in Classes 29 and/or 30.
These are figurative marks composed of the term "JUMBO", in particular:
It also invoked the renowned but non-registered JUMBO trade mark within the meaning of Article 6 of the Paris Convention.
The Opposition Division upheld the opposition for a number of the products claimed.
This decision was annulled by the Board of Appeal, which found in particular that:
- The relevant public “was made up of European Union "buyers", in particular Spanish "buyers" of food products”;
- The visual comparison of signs is particularly important to the extent that the goods in question were visible on a supermarket shelf before being purchased;
- The signs at issue were manifestly different in so far as the earlier trade marks are figurative whereas the trade mark applied for is a pure word mark;
- Despite being phonetically identical, the signs present strong conceptual dissimilarity which made it possible to rule out any similarity. The term JUMBO is understood to mean "big" while the term JAMBO has no meaning for average consumers.
The Board of Appeal excluded the renowned, non-registered JUMBO trade mark from its analysis by finding that no proof of its use in the European Union had been presented.
The General Court of the European Union confirmed this decision. It indicated in particular that:
- Where a sign consists of both figurative and word elements, it does not automatically follow that the word element must always be considered to be dominant;
- Trade marks must be examined as a whole;
- The overall visual impression produced by two marks which share a common element may be different, in particular where the comparison concerns, on the one hand, a word trade mark and, on the other, trade marks which consist of both word and figurative elements;
- The Board of Appeal was right to compare the signs at issue as a whole on account, in particular, of the non-negligible nature of the figurative elements of the earlier trade marks, and to find that there were visual differences between those signs.
As regards the phonetic comparison of the signs, and contrary to the Board of Appeal that had not taken the term AFRIKA of the trade mark applied for into account, the Court found that the signs present a slight degree of similarity.
As regards the conceptual comparison of the signs, the Court confirmed the Board of Appeal's assessment according to which the signs are different.
The outcome of this proceeding would probably have been different had Preparados Alimenticios been able to base its opposition on a verbal, registered JUMBO trade mark.