In Present-Service Ullrich GmbH & Co. KG v OHIM  T-66/11, the EUGC has upheld a decision of the Office of Harmonization for the Internal Market (OHM) Board of Appeal (the Board) finding a likelihood of confusion between the word mark BABILU and an earlier Community trade mark (CTM) registration for BABIDU, both registered in respect of advertising services.
Present-Service Ullrich filed a CTM application for BABILU in respect of advertising services in Class 35. Punt-Nou opposed the mark on the basis of its prior CTM registration for BABIDU, registered in respect of commercial retailing and publicity services in Class 35. OHIM upheld the opposition and a subsequent appeal was dismissed. The Board held that the marks covered identical services and were very similar, giving rise to a likelihood of confusion. Present-Service Ullrich appealed to the General Court.
Rejecting Present-Service Ullrich’s argument that the services covered by the respective marks were entirely different, the General Court noted that the mark upon which the opposition was based was filed in Spanish and that the word “publicidad” had erroneously been translated as “publicity” whereas it should have been translated as “advertising”.
The General Court agreed with the Board that the Spanish wording used corresponded with the class heading for Class 35. The earlier mark had been registered prior to the decision in Chartered Institute of Patent Attorneys  C-307/10 and the adaptation of Communication 2/12, which requires some precision on the part of applicants for CTMs who use all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection is sought. Therefore, by using all the general indications listed in the heading of Class 35, Punt-Nou intended to cover all the services included in the alphabetical list of that class. Punt-Nou indeed confirmed in its written pleadings that this had been its intention when submitting the application for registration. It followed that the services covered by the respective marks were identical.
The General Court found that there was a high degree of visual and aural similarity between the marks, given that they only differed in their fifth letter. As neither mark had any meaning, it was not possible to compare the marks conceptually. The General Court found that only a very small proportion of the relevant public would be able to understand the word BABILU as being the Akkadian language version of the word “Babylon”. Similarly, very few people from the relevant public would recognise BABILU as the imperative form of the Esperanto verb “babili” which meant “to chatter”.
In view of the fact that the services in question were identical, that there was a high degree of overall similarity between the marks at issue, and that the earlier mark was of normal distinctiveness, the General Court found that the Board was right to conclude there was a likelihood of confusion between the respective marks, despite finding that the relevant public, which consisted of professionals, had a higher than average level of attention.
Present-Service Ullrich also sought to argue that it operated in an entirely different commercial sector to Punt-Nou in order to refute the finding of a likelihood of confusion. The General Court noted that this was entirely irrelevant. In order to assess the similarity of goods or services concerned, the goods and services protected by the marks had to be taken into account, not the goods or services actually marketed under those marks. A theoretical likelihood of confusion determined by a comparison of the marks vis-à-vis the goods and services at issue is therefore sufficient in order to succeed in opposition proceedings even though, in practice, adversaries may never collide in their commercial activities, or encounter actual confusion.