Opinion of the Advocate General — ECLI:EU:C:2015:167
Date: 2015-03-12
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary — Judgment of the Court (First Chamber), 22 October 2015 1. Approximation of laws — Trade marks — Directive 2008/95 —Refusal of registration or invalidity — Absolute and relative grounds for refusal — Different aims and different interests to be protected (European Parliament and Council Directive 2008/95, Arts 3(1)(b) and (c) and 4(1)(b)) 2. Approximation of laws — Trade marks — Directive 2008/95 — Refusal of registration or invalidity — No distinctive character — Sign consisting of a letter sequence juxtaposed with a word combination — Assessment on a case-by-case basis (European Parliament and Council Directive 2008/95, Art. 3(1)(b) and (c)) 3. Approximation of laws — Trade marks — Directive 2008/95 — Definition and acquisition of the mark — Relative grounds for refusal — Opposition by the proprietor of an identical or similar earlier mark registered in respect of identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment — Composite mark — Element common to two marks which has an independent distinctive role in the later mark — Likelihood of confusion (European Parliament and Council Directive 2008/95, Art. 4(1)(b)) 4. Approximation of laws — Trade marks — Directive 2008/95 — Refusal of registration or invalidity — Further grounds for refusal or invalidity concerning conflicts with earlier rights — Later word mark which incorporates the same letter sequence as an earlier mark and adds a descriptive word combination — Likelihood of confusion — Assessment by the national court (European Parliament and Council Directive 2008/95, Art. 4(1)(b)) 1. The absolute grounds for refusal of registration set out in Article 3(1)(b) and (c) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks and the relative grounds for refusal of registration set out in Article 4(1)(b) of that directive pursue different aims and are intended to protect distinct interests. The general interest underlying Article 3(1)(c) of Directive 2008/95 is that of ensuring that signs which describe one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services. The notion of general interest underlying Article 3(1)(b) of that directive is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. By contrast, Article 4(1)(b) of Directive 2008/95 is intended to protect the individual interests of proprietors of earlier marks that come into conflict with the sign applied for and thus guarantees the trade mark as an indication of origin if there is a likelihood of confusion. (see paras 23-26) 2. Whether a sign consisting of a letter sequence juxtaposed with a word combination is to be refused registration under Article 3(1)(b) and (c) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks must be assessed on a case-by-case basis, according to the perception which the relevant public has of the interdependence between the various elements of the sign and of the sign as a whole. (see para. 31) 3. See the text of the decision. (see paras 35-41) 4. Article 4(1)(b) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in the case of identical or similar goods and services, there may be a likelihood of confusion on the part of the relevant public between an earlier mark consisting of a letter sequence, which is distinctive and is the dominant element in that mark of average distinctiveness, and a later mark which reproduces that letter sequence and to which is added a descriptive combination of words, the initial letters of which correspond to the letters of that sequence, with the result that that sequence is perceived by that public as the acronym of that combination of words. In such a case, the national court must examine, among other factors, whether the links which the relevant public may establish between the letter sequence and the word combination, in particular the possibility that the former may be perceived as an acronym of the latter, are such that that sequence may be perceived and remembered separately by the relevant public in the later mark. Likewise, it must, if necessary, assess whether the elements of which the later mark consists, taken as a whole, form a separate logical unit which has a different meaning from that of those elements taken separately. (see paras 43, 44, operative part)