CELEX: 62002TJ0286
Community trade mark
Opposition proceedings
Application for the Community word mark KIAP MOU
Earlier national word marks MOU
Refusal to register

Background to the dispute
On 29 September 1998, the applicant filed at the Office for Harmonisation in the Internal Market (Trade Marks and Designs)
(
the Office), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended,
an application for registration of a Community trade mark.
The mark whose registration was applied for is the sign KIAP MOU.
The goods in relation to which registration was sought come within Classes 29 and 30 of the Nice Agreement concerning the
International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised
and amended, and correspond to the following descriptions for each of those classes:
─
Class 29:
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk
and other milk products; edible oils and fats; preserves of meat, fish, poultry and game; pickles, dried sausages; prepared
or cooked dishes based on vegetables; prepared or cooked dishes based on meat; prepared or cooked dishes based on fish;
Class 29:
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk
and other milk products; edible oils and fats; preserves of meat, fish, poultry and game; pickles, dried sausages; prepared
or cooked dishes based on vegetables; prepared or cooked dishes based on meat; prepared or cooked dishes based on fish;
─
Class 30:
Prepared or cooked dishes based on pastry, pasta or rice.
Class 30:
Prepared or cooked dishes based on pastry, pasta or rice.
On 4 October 1999, that application was published in
Community Trade Marks Bulletin
No 78/99.
On 4 January 2000, Mou Dybfrost A/S (
the intervener) filed, pursuant to Article 42 of Regulation No 40/94, a notice of opposition to registration of the mark applied for, in
respect of all the goods referred to in the trade mark application. The ground relied upon in support of the opposition is
the likelihood of confusion referred to in Article 8(1)(b) of Regulation No 40/94. The opposition was based on the existence
of various earlier national trade marks of which the intervener is the proprietor, in particular:
─
the word mark MOU, registered in the United Kingdom on 18 August 1995 under No 1524701 in relation to the goods
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; meat, fish, fruit and vegetable
jellies; jams; egg products; milk products; yoghurt and milk powder; edible oils and fats; tinned meat and fish; soups, bouillon,
soups with meat, stews; meatballs, marrow balls and vegetable balls; prepared meals consisting wholly or substantially of
meat, fish, poultry, game, vegetables and/or fruit; sausage and sausage products; hamburgers, which are all included in Class 29;
the word mark MOU, registered in the United Kingdom on 18 August 1995 under No 1524701 in relation to the goods
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; meat, fish, fruit and vegetable
jellies; jams; egg products; milk products; yoghurt and milk powder; edible oils and fats; tinned meat and fish; soups, bouillon,
soups with meat, stews; meatballs, marrow balls and vegetable balls; prepared meals consisting wholly or substantially of
meat, fish, poultry, game, vegetables and/or fruit; sausage and sausage products; hamburgers, which are all included in Class 29;
─
the word mark MOU, registered in the United Kingdom on 18 August 1995 under No 1524702 in relation to the goods
Sago; flour and preparations made of cereals for consumption; bread, pastry and confectionery, ices, salt, mustard, vinegar;
spices; ice; flour dumplings; toasts; prepared meals consisting wholly or substantially of noodles, rice, corn, flour and/or
cereal preparations; sauces and salad dressings; hamburgers in a bun, which are all included in Class 30.
the word mark MOU, registered in the United Kingdom on 18 August 1995 under No 1524702 in relation to the goods
Sago; flour and preparations made of cereals for consumption; bread, pastry and confectionery, ices, salt, mustard, vinegar;
spices; ice; flour dumplings; toasts; prepared meals consisting wholly or substantially of noodles, rice, corn, flour and/or
cereal preparations; sauces and salad dressings; hamburgers in a bun, which are all included in Class 30.
By decision of 11 December 2000 (
the decision of the Opposition Division), the Opposition Division of the Office, on the basis of those two earlier marks registered in the United Kingdom, found
that the marks at issue were similar and that the goods in question were identical or similar and that there was therefore
a likelihood of confusion between them. That division thus upheld the opposition and refused to register the mark applied
for in respect of those goods.
On 26 January 2001, the applicant filed notice of appeal at the Office, pursuant to Article 59 of Regulation No 40/94, against
the decision of the Opposition Division.
That appeal was rejected by decision of the Fourth Board of Appeal of the Office of 28 June 2002 (Case R 114/2001-4,
the contested decision), notified to the applicant on 5 August 2002. In substance, the Board of Appeal found that there was a likelihood of confusion
between the earlier marks and the mark applied for, because of the identity of the goods in question and the visual and phonetic
similarities between the signs in dispute and because the average United Kingdom consumer did not have any particular knowledge
of the Laotian language and was therefore able to see the word
mou only as an invented word.
Procedure and forms of order sought
By application lodged at the Court Registry on 23 September 2002, the applicant brought the present action. The Office lodged
its response on 3 March 2003 and the intervener lodged its response on 4 March 2003.
The hearing took place on 23 September 2003 in the absence of the applicant, which was neither represented nor excused.
The applicant claims that the Court should:
─
annul the contested decision;
annul the contested decision;
─
alter the decision of the Opposition Division;
alter the decision of the Opposition Division;
─
reject the intervener's opposition;
reject the intervener's opposition;
─
approve the application for registration of the trade mark KIAP MOU;
approve the application for registration of the trade mark KIAP MOU;
─
order the intervener to pay the costs.
order the intervener to pay the costs.
The Office contends that the Court should:
─
reject as inadmissible the applicant's claims that the decision of the Opposition Division should be altered, the opposition
should be rejected and the disputed trade mark application should be approved;
reject as inadmissible the applicant's claims that the decision of the Opposition Division should be altered, the opposition
should be rejected and the disputed trade mark application should be approved;
─
as to the remainder, dismiss the application as unfounded:
as to the remainder, dismiss the application as unfounded:
─
order the applicant to pay the costs.
order the applicant to pay the costs.
The intervener contends that the Court should:
─
confirm the contested decision;
confirm the contested decision;
─
order the applicant to pay the costs.
order the applicant to pay the costs.
The application to annul the contested decision
The applicant puts forward, in substance, a single plea in law, based on infringement of Article 8(1)(b) of Regulation No
40/94.
Arguments of the parties
The applicant states that the food products, made up essentially of pork meat products, which it manufactures and distributes
are intended exclusively for a clientele of Indochinese origin (Vietnamese, Laotian, Thai and Chinese). Those products include
fried pork rind, a typical speciality of Indochina, which the applicant markets under the fanciful trade mark KIAP MOU.
According to an expert's report annexed to the application, in Laotian and Thai the substantive
mou means
pork, whilst the adjectival expression
kiap means crispy or crunchy, so that the composite
kiap mou can be translated as
crispy fried pork rind or even
crispy pork.
The applicant infers that, for the clientele concerned, namely the communities of Indochinese origin living in Western Europe,
the sign MOU is purely descriptive of a product which constitutes an essential ingredient of their diet. It claims that such
a sign is not capable of protection under trade mark law.
By contrast, according to the applicant, the addition of the word
kiap confers on the sign KIAP MOU sufficient originality to make it registrable as a Community trade mark.
The applicant adds that the sign KIAP MOU is sufficiently distinctive from the sign MOU to enable the goods in question to
be differentiated.
As a consequence, the applicant submits that the contested decision should be annulled and the trade mark application in question
approved.
The Office and the intervener contend, in substance, that the Board of Appeal rightly decided, in correct application of the
relevant Community legislation and case-law, that there exists a likelihood of confusion between the marks at issue, within
the meaning of Article 8(1)(b) of Regulation No 40/94, and that the application must therefore be dismissed.
Findings of the Court
According to Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade
mark applied for is not to 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. Moreover, under Article 8(2)(a)(ii) of Regulation No 40/94,
earlier trade marks means trade marks registered in a Member State with a date of application for registration which is earlier than the date
of application for registration of the Community trade mark.
It is apparent from the case-law of the Court of Justice on interpretation of Articles 4(1)(b) and 5(1)(b) of First Council
Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40,
p. 1), the prescriptive content of which is essentially identical to that of Article 8(1)(b) of Regulation No 40/94, that
the likelihood of confusion consists in the risk that the public might believe that the goods or services in question come
from the same undertaking or, as the case may be, from economically-linked undertakings (Case C-39/97
Canon
[1998] ECR I-5507, paragraph 29, and Case C-342/97
Lloyd Schuhfabrik Meyer
[1999] ECR I-3819, paragraph 17).
According to the same case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking
into account all factors relevant to the circumstances of the case (Case C-251/95
SABEL
[1997] ECR I-6191, paragraph 22;
Canon
, cited in paragraph 23 above, paragraph 16;
Lloyd Schuhfabrik Meyer
, cited in paragraph 23 above, paragraph 18, and Case C-425/98
Marca Mode
[2000] ECR I-4861, paragraph 40).
That global assessment implies some interdependence between the relevant factors, and in particular between similarity between
the trade marks and similarity between the goods or services identified. Accordingly, a lesser degree of similarity between
these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (
Canon
, cited in paragraph 23 above, paragraph 17;
Lloyd Schuhfabrik Meyer
, cited in paragraph 23 above, paragraph 19, and
Marca Mode
, cited in paragraph 24 above, paragraph 40). The interdependence of these factors is expressed in the seventh recital in
the preamble to Regulation No 40/94, according to which an interpretation should be given of the concept of similarity in
relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade
mark on the market and the degree of similarity between the trade mark and the sign and between the goods or services identified.
In addition, the perception of marks in the mind of the average consumer of the category of goods or services in question
plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a
mark as a whole and does not proceed to analyse its various details (
SABEL
, cited in paragraph 24 above, paragraph 23, and
Lloyd Schuhfabrik Meyer
, cited in paragraph 23 above, paragraph 25). For the purposes of that global appreciation, the average consumer of the goods
concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Moreover, account should be taken
of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but
must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the
average consumer's level of attention is likely to vary according to the category of goods or services in question (
Lloyd Schuhfabrik Meyer
, cited in paragraph 23 above, paragraph 26).
In the present case, the two earlier marks are registered in the United Kingdom, which therefore constitutes the relevant
territory for the purposes of applying Article 8(1)(b) of Regulation No 40/94.
Furthermore, both the goods covered by the earlier marks and the goods covered by the trade mark application are everyday
food products falling within Classes 29 and 30.
In that regard, it is not necessary to take account of the applicant's assertion that it intends to use the mark applied for
only in relation to some of the goods referred to in the trade mark application and, more particularly, for fried pork rind.
It should indeed be noted that, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion
must be assessed in relation to all the goods specified in the trade mark application. In order to be taken into consideration,
a restriction of the list of goods or services specified in a Community trade mark application must be made in accordance
with certain detailed rules, on application for amendment of the application filed, in accordance with Article 44 of Regulation
No 40/94 and Rule 13 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995
L 303, p. 1) (see, to that effect, Case T-194/01
Unilever
v
OHIM
(Ovoid tablet)
[2003] ECR II-383, paragraph 13). However, those rules have not been complied with in the present case, since the applicant
has not submitted an application for amendment of the application pursuant to those provisions.
Nor need account be taken of the applicant's assertion that the goods referred to in the trade mark application are intended
exclusively for a clientele of Chinese or Indochinese (Vietnamese, Laotian, Thai) origin living in Western Europe.
First, the Office has rightly pointed out that there is nothing in the wording of the contested application for registration
to suggest that the goods in question are intended exclusively for such a clientele. The general terms used by the applicant
suggest instead that those goods are intended for the usual, average clientele of the food products also covered by the earlier
marks. Without being contradicted on that point by the applicant, the Office states that those goods are distributed through
the same channels and sold at the same points of sale to the same type of purchasers.
Second, the Office has also rightly submitted that, without further specification in the wording of the contested application,
the mere fact that the word
mou means something in an Indochinese language or that the expression
kiap mou refers, in that same language, to a characteristic of the goods is not sufficient to establish and define a particular category
of consumers targeted by the contested trade mark application.
In any event, that assertion of the applicant does not seem to be relevant for the purposes of applying Article 8(1)(b) of
Regulation No 40/94 since, as the Office and the intervener have pointed out, following the Board of Appeal, the way in which
the goods are described in the trade mark application does not preclude the later use of the mark in question for a broader
market, namely the market targeted by the earlier marks.
Accordingly, account must be taken, for the purposes of the global assessment of the likelihood of confusion, of the point
of view of the relevant public made up of the end users of everyday food products in the United Kingdom.
In the light of the foregoing considerations, it is necessary to review the comparison made by the Board of Appeal of, first,
the goods concerned and, second, the signs in dispute.
In the first place, the goods in question, as referred to in the trade mark application on the one hand and by the earlier
trade marks on the other, are indisputably identical or, at the very least, similar. As the Office has stated, these are food
products falling within Classes 29 and 30 which are presented in general terms mainly using the chapter headings of the Nice
Classification. Furthermore, the applicant does not dispute that identity or similarity as such. As to the applicant's arguments
to the effect, first, that use of the mark applied for will be restricted to only some of the goods referred to in the trade
mark application and, second, that those goods are intended exclusively for an Indochinese clientele, they have already been
rejected above.
In the second place, as regards the signs at issue, it should be pointed out, in general terms, 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 (Case T-6/01
Matratzen Concord
v
OHIM ─ Hukla Germany (MATRATZEN)
[2002] ECR II-4335, paragraph 30). As the case-law of the Court of Justice indicates, the visual, aural and conceptual aspects
are relevant. Furthermore, assessment of the similarity between two marks must be based on the overall impression created
by them, bearing in mind, in particular, their distinctive and dominant components (
SABEL
, cited in paragraph 24 above, paragraph 23, and
Lloyd Schuhfabrik Meyer
, cited in paragraph 23 above, paragraph 25).
In that regard, the Court finds that it is necessary to make an initial analysis based on the premiss that, where one of the
two words which alone constitute a word mark is identical, both visually and aurally, to the single word which constitutes
an earlier word mark, and where those words, taken together or in isolation, have no conceptual meaning for the public concerned,
the marks at issue, each considered as a whole, are normally to be regarded as similar within the meaning of Article 8(1)(b)
of Regulation No 40/94.
In the present case, both visually and aurally,
mou is both the single word constituting the earlier word marks and the second of the two words (the first being
kiap) constituting the word mark applied for.
Moreover, conceptually, as was found above, the relevant public is made up of end users of everyday food products in the United
Kingdom. Such a public is in the very great majority anglophone. The words
mou,
kiap and
kiap mou have no meaning in English and they bear no resemblance to the English words which have a meaning equivalent to that of these
words in Laotian or Thai. Moreover, there is nothing in the case file or the applicant's arguments to suggest that a significant
proportion of that public has a sufficient knowledge of the Laotian or Thai languages to understand the meaning of the words
in question in those languages.
It also follows from those considerations that, from the point of view of the relevant public, and contrary to the applicant's
submission,
mou is not descriptive of the goods covered by the earlier mark. It will be viewed by that public as a term which is invented
and inherently distinctive.
As the same is true of the word
kiap, the Court finds, as did the Office, that those two words have an equal power of attraction for the relevant public and that,
coupled together in the expression
kiap mou, they will be viewed by that public as equally dominant, without the word
mou losing its distinctiveness.
In those circumstances, the Board of Appeal was entitled to conclude that the signs constituting the word marks in issue,
each considered as a whole bearing in mind, in particular, their distinctive and dominant components, are similar.
In the light of the foregoing, the relevant public is likely to think that the food products bearing the word mark KIAP MOU
may come from the undertaking which is proprietor of the earlier word marks MOU. As a consequence, the degree of similarity
between the marks at issue is sufficient for it to be considered that there exists a likelihood of confusion between them.
Accordingly, the single plea in law based on infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected.
The application must therefore be dismissed and it is not necessary to rule on the admissibility of the applicant's claims
that the decision of the Opposition Division should be altered, the opposition should be rejected and the disputed trade mark
application should be approved.
Costs
Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay
the costs if they have been applied for in the successful party's pleadings. Since the applicant has been unsuccessful, it
must be ordered to pay the costs incurred by the Office and the intervener, in accordance with the forms of order sought by
them.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber),
hereby:
1.
Dismisses the application;
2.
Orders the applicant to pay the costs.
Forwood
Pirrung
Meij
Delivered in open court in Luxembourg on 25 November 2003.
H. Jung
J. Pirrung
Registrar
President
–
Language of the case: French.