The General Court has confirmed the existence of a likelihood of confusion between the word marks YOO and YO in relation to a range of goods and services including catering and several categories of food and drink.
The appeal was against a decision of the OHIM Second Board of Appeal. Yoo Holdings (“Yoo”), the applicant, had applied to register the word sign YOO as a CTM in class 43 for “Restaurant services, bar services, café, cafeteria, canteen, snack bar and catering services; lounge and bar services; services for providing food and drink”. Eckes-Granini Group GmbH (“Eckes”) filed an opposition based on an earlier national German word mark YO and an International trade mark designating the European Community, YO in classes 29, 30 and 32, for a range of goods including foods, ingredients, confectionary, beers, and several soft drinks.
Yoo claimed in their appeal that the Board was wrong to find similarity between the services applied for and the goods covered by the earlier marks. Yoo also claimed the signs were different and that there was no likelihood of confusion. The General Court found however that the services applied for were complementary to the goods covered by the earlier mark. Goods such as pastries and confectionery were often served in restaurants and as a result the goods were closely related to those services.
Yoo also argued that consumers would assume that the undertaking manufacturing such goods would be different to those supplying them to restaurants. The General Court disagreed with this saying it was often the case that both the manufacturer and supplier were the same. As a result the Court said the Board of Appeal was right to find that the goods and services were similar.
The Court also said the Board had been right to find a high degree of visual similarity between the marks. In considering the phonetic similarity, the General Court found that it was only English speakers who would pronounce the words differently (saying ”oo” rather than “o”) and that this was not enough to distinguish the words.
In considering the conceptual similarity it was only Spanish speakers and English speakers who would consider that there were conceptual differences; “Yo” meaning ”I” in Spanish and being an “interjection which can be used to greet someone or get his attention” in English. This however did not alter the overall impression produced by the words.
Yoo claimed that the earlier marks had a less than average distinctive character. The General Court reiterated that distinctive character was only one of the factors to be taken into account when considering an overall assessment of likelihood of confusion and as such did not preclude a finding of likelihood of confusion.
The General Court therefore found that the Board of Appeal had been right to refuse to register the mark applied for in class 43 and dismissed Yoo’s appeal.