# C_2004217EN.01002602.xml

| 28.8.2004 | EN | Official Journal of the European Union | C 217/26 |
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28.8.2004

EN

Official Journal of the European Union

C 217/26

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Action brought on 7 June 2004 (fax/e-mail: 2 June 2004) by Fernando Rodrigues Carvalhais against the Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case T-206/04)

(2004/C 217/48)

Language of the case: Portuguese

An action against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of First Instance of the European Communities on 7 June 2004 (fax/e-mail: 2 June 2004) by Fernando Rodrigues Carvalhais, represented by Paulo Graça, lawyer.

PROFILPAS, S.N.C. (Ufficio Veneto Brevetti) was also a party to the proceedings before the Board of Appeal

The applicant claims that the Court should:

| — | annul the decision of 18 March 2004 (Joined Cases R 2407/2002 of 8 August 2002 and R 408/2003 1) of the First Board of Appeal of the Office for the Harmonisation of Internal Market (OHIM); |
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annul the decision of 18 March 2004 (Joined Cases R 2407/2002 of 8 August 2002 and R 408/2003 1) of the First Board of Appeal of the Office for the Harmonisation of Internal Market (OHIM);

| — | order the defendant to pay the costs. |
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order the defendant to pay the costs.

Pleas in law and main arguments:

| Applicant for Community trade mark: | Fernando Rodrigues Carvalhais |
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| Community trade mark sought: | Figurative mark ‘PERFIX’, application number 1635515 for goods falling within Classes 6 (Profiles of metal and accessories), 17 (Profiles of plastic and rubber and their accessories, joints and trim elements in plastic material) and 19 (building materials (non-metallic), edging, (trim) and ceramic joints, edging, (trim) and marble joints, edging, (trim) and joints for coverings in general (not encompassed by other classes)) |
| Proprietor of mark or sign cited in the opposition proceedings: | PROFILPAS, S.N.C. |
| Mark or sign cited in opposition. | Figurative mark ‘CERFIX’ (Community trade mark number 587725) and word mark ‘PROFIX’ (Community trade mark number 771196) |
| Decision of the Opposition Division: | Opposition rejected |
| Decision of the Board of Appeal: | Decision of the Opposition Division annulled and registration refused |
| Pleas in law: | Misinterpretation of Article 8(e)(2)(a) of Regulation No 40/94 by the Board of Appeal inasmuch as it found that registration of the trade mark sought could result in a likelihood of confusion with Community trade marks No 587725 and No 771196
  According to the tenth recital of the preamble to the Community trade mark directive, assessment of the likelihood of confusion depends on numerous factors .... In the contested decision, the Board of appeal committed a manifest error of assessment in that, after setting out a number of such factors in general terms, it failed subsequently to fulfil its obligation to make a global assessment thereof.
  By analysing the signs by comparison with each other, the contested decision failed to carry out a global assessment of the signs in question, a test set down in, among others, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25.
  Manifest contraction by the Board of Appeal in that, while citing the ‘global assessment of the signs in question’ test, it subsequently adopted a different test and proceeded to ‘dissect’ the Community trade mark whose application was sought.
  The applicant claims that the decision of the Board of Appeal concludes, surprisingly, that despite all the dissimilarities between the signs in issue, there is a likelihood of confusion between the trade marks in question.
  Account should also have been taken of all the Community trade marks registered by third parties in respect of goods in Classes 6, 17 and 19 containing the suffix and/or prefix ‘FIX’, some of which pre-date those of the opponent's. Given that there is no likelihood of confusion as between them, it cannot be claimed that that of the applicant may be confused with those of the opponent.
  The predominant feature of the trade marks in issue is their characteristic portrayal, together with a particular graphic presentation.
  In conclusion: there is no likelihood of confusion in the mind of the consumer in the event of there coexisting on the market of different signs which merely coincide in the term ‘FIX’. |

Applicant for Community trade mark:

Fernando Rodrigues Carvalhais

Community trade mark sought:

Figurative mark ‘PERFIX’, application number 1635515 for goods falling within Classes 6 (Profiles of metal and accessories), 17 (Profiles of plastic and rubber and their accessories, joints and trim elements in plastic material) and 19 (building materials (non-metallic), edging, (trim) and ceramic joints, edging, (trim) and marble joints, edging, (trim) and joints for coverings in general (not encompassed by other classes))

Proprietor of mark or sign cited in the opposition proceedings:

PROFILPAS, S.N.C.

Mark or sign cited in opposition.

Figurative mark ‘CERFIX’ (Community trade mark number 587725) and word mark ‘PROFIX’ (Community trade mark number 771196)

Decision of the Opposition Division:

Opposition rejected

Decision of the Board of Appeal:

Decision of the Opposition Division annulled and registration refused

Pleas in law:

Misinterpretation of Article 8(e)(2)(a) of Regulation No 40/94 by the Board of Appeal inasmuch as it found that registration of the trade mark sought could result in a likelihood of confusion with Community trade marks No 587725 and No 771196

According to the tenth recital of the preamble to the Community trade mark directive, assessment of the likelihood of confusion depends on numerous factors .... In the contested decision, the Board of appeal committed a manifest error of assessment in that, after setting out a number of such factors in general terms, it failed subsequently to fulfil its obligation to make a global assessment thereof.

By analysing the signs by comparison with each other, the contested decision failed to carry out a global assessment of the signs in question, a test set down in, among others, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25.

Manifest contraction by the Board of Appeal in that, while citing the ‘global assessment of the signs in question’ test, it subsequently adopted a different test and proceeded to ‘dissect’ the Community trade mark whose application was sought.

The applicant claims that the decision of the Board of Appeal concludes, surprisingly, that despite all the dissimilarities between the signs in issue, there is a likelihood of confusion between the trade marks in question.

Account should also have been taken of all the Community trade marks registered by third parties in respect of goods in Classes 6, 17 and 19 containing the suffix and/or prefix ‘FIX’, some of which pre-date those of the opponent's. Given that there is no likelihood of confusion as between them, it cannot be claimed that that of the applicant may be confused with those of the opponent.

The predominant feature of the trade marks in issue is their characteristic portrayal, together with a particular graphic presentation.

In conclusion: there is no likelihood of confusion in the mind of the consumer in the event of there coexisting on the market of different signs which merely coincide in the term ‘FIX’.

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