Risk of confusion between "B!O" and "bo"?

Is there a risk of confusion between the trade mark "B!O" of the food discount retailer Penny-Markt and the earlier trade mark "bo"? The Court of Justice of the European Union in Luxembourg had to decide on this.

In 2011, Penny-Markt GmbH filed the Community trade mark "B!O". The mark was registered for various foodstuffs and beverages.

The Community trade mark "bo" was registered for the same goods before the mark "B!O".

The proprietor of the trade mark "bo" objected to the mark "B!O".

The OHIM agreed and confirmed a risk of confusion. The mark "B!O" was declared invalid by the OHIM.

The supermarket chain resisted this decision – but without success.

The court's decision on "B!O" vs. "bo"

By means of judgment of 18.02.2016 – Az. T-364/14 the EuG decided that the mark "B!O" infringes the rights of the earlier mark "bo" and thereby confirmed the position of the OHIM. The mark "B!O" thus remains invalid.

The Luxembourg judges justified their decision on the grounds that there was an excessive risk of confusion between the two marks due to above-average visual and phonetic identity.

The average consumer pronounces the trade mark of the supermarket chain Penny not as "bio", but as "bo" and perceives it as such. The exclamation mark in the mark "B!O" is understood as a purely decorative element and is not perceived as the inverted letter "i".

The earlier mark "bo" is furthermore protected in all customary representations and thus also in the form of capital letters.

Conclusion

The mark "B!O" is confusingly similar to the earlier mark "bo" and is thus invalid.

The decision demonstrates that when comparing trade marks, in addition to visual similarity, phonetic similarity must also be considered, i.e. how the marks are pronounced by the average consumer.