EU General Court Confirms Similarity of Trade Marks BILLA and BILLABONG

On 4 December 2019, the General Court (GC) of the European Union issued its decision in Billa v EUIPO – Boardriders IP Holdings (Billa) (T-524/18), ruling that there was a likelihood of confusion between the trade marks BILLA and BILLABONG inter alia because the marks were visually and phonetically similar to an average degree. The GC did not accept the Appellant’s arguments that the suffix “-bong” was an integral and indivisible part of the opposing mark and that the Board of Appeal (BOA) had incorrectly attached too much attention to the first part “Billa-” of the earlier mark in assessing its overall impression. However, the GC found that the BOA has erred in finding that the goods “games” and the services of “retailing of sporting goods” were similar and partly annulled the decision for those applied for services.

The Applicant, Billa AG, had filed an EU trade mark application for the word mark “BILLA” for goods and services in classes 14, 18, 25, 28 and 35. The Intervenor, Boardriders IP Holdings LLC, opposed based on its earlier EU word mark “BILLABONG” registered for classes 14, 18, 25 and 28. The EUIPO Opposition Division partially upheld the opposition on the grounds that there was a likelihood of confusion as regards all goods applied for, except for “games; toys” in class 28. The decision was appealed by Billa AG, and the BOA dismissed the appeal. Billa AG appealed to the GC, and its main substantive plea in law was divided into three complaints. Firstly, Billa disputed the Board of Appeal’s assessment relating to the comparison of the marks; secondly it partly disputed its analysis regarding the comparison of certain goods and services, and thirdly it submitted that the BOA should not have insinuated a likelihood of confusion without giving precise grounds.

The GC first dealt with the comparison of goods and services. Billa AG did not dispute the BOA’s findings as regards the goods in classes 14, 18 and 25 and the goods “gymnastic and sports articles” and “toys” in class 28 applied for. However, Billa AG submitted that the BOA had erred in finding the goods “games” and the services of “retailing of sporting goods” to be similar. In its analysis, the GC commented that the goods “games” and the goods “sporting goods” had in other cases been held to be different because they have different natures, intended purpose and distribution channels, and are not interchangeable or in competition with each other. The GC commented that the purpose of “sporting goods” is to engage in physical exercise, whereas the sole purpose of “games” is, in principle, to entertain. The respective goods would also have different distribution channels, in that the goods “games” and “sporting goods” would be sold in different shops, or in different parts of larger department stores. As regards the EUIPO’s arguments that the goods “games” and the services “retailing of sporting goods” are aimed at the same public, the GC held that this argument even if proved would not in itself be sufficient for similarity. Furthermore, the use of the goods “games” was not indispensable or important for the use of the service “retailing of sporting goods”, and vice versa for the purpose of the principle of the goods/services being complimentary. Accordingly, the GC deduced that the goods and services in question were not similar.

Turning to the comparison of marks, the GC confirmed that the BOA was correct to take into account that consumers normally pay more attention to the beginnings of marks, and that this was a valid factor to consider when comparing the overall visual impressions created by the marks. In addition, the respective marks were not composite marks, such that the assessment of visual similarity would in principle need to involve more than just taking one component of the composite mark and comparing it with the other mark, and the Applicant had itself highlighted the unitary nature of the opposing mark. In light of these factors, the GC rejected the Applicant’s contention that the BOA did not take into account the overall visual impression created by the marks. From a phonetic point of view, the GC observed that the first two syllables of the marks at issue were identical and pronounced in the same way. In addition, it held that the principle that the initial part of the word element of a mark is likely to attract the consumer’s attention more than the following parts also applies in the test of phonetic similarity. Consequently, the group of letters “Billa” carried greater weight in the phonetic comparison than the group of letters “Bong”. Regarding the conceptual comparison of the marks, the GC held that the BOA was right in finding that no conceptual comparison could be carried out. Although the Applicant claimed that the relevant public could understand the meaning of the term “Billabong” by consulting any Australian/English dictionary, this fact did not establish that the word had, in accordance with established case law, from the point of view of the relevant public consisting of European Union consumers taken as a whole, a clear and specific meaning, with the result that the public would be capable of grasping it immediately.

Finally, the GC upheld the BOA’s conclusion that there was a likelihood of confusion on the part of the relevant general public, taking into account the identity and similarity of the goods and services, the average degree of visual and phonetic similarity of the marks, and the fact that the contested sign was identical to the beginning and first half of the earlier mark. However, the BOA had erred in finding a likelihood of confusion between the marks as regards the applied for goods “games” and the service of “retailing of sporting goods” protected by the earlier mark as the goods and services were not similar, and the contested decision was annulled for games in Class 28.

Mary Bleahene
Trade Mark Partner