Judgment — ECLI:EU:T:2005:135
Date: 2005-04-20
Language of the case: Italian
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Figurative marks applied for;Similarity between marks
Procedure: Action for annulment - successful
Origin: Italy

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Visual similarity between a complex figurative mark and a word mark – Criteria for assessment (Council Regulation No 40/94, Art. 8(1)(b)) 2. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Complex figurative mark Faber and word mark NABER (Council Regulation No 40/94, Art. 8(1)(b)) 1. In order to assess, when considering an opposition raised by the proprietor of the earlier trade mark under Article 8(1)(b) of Regulation No 40/94, the visual similarity between a complex figurative mark and an earlier word mark, the particular graphic or stylistic aspects that the earlier mark might adopt are irrelevant. In any event, the assessment of the similarity with the earlier word mark should not be replaced by an assessment of similarity with a figurative element which does not form part of the protection conferred by the earlier registration. In fact, it is not because an earlier word mark may adopt a written form in the future which would make it identical or similar to a complex mark applied for that the latter mark must be refused registration, but because the complex mark is in fact made up, in addition to an unusual figurative aspect, of a word element identical or similar to that comprising the earlier mark, and that, as part of the global assessment of the likelihood of confusion, that word element cannot be regarded as subsidiary in relation to the other component of the sign. (see paras 37-38) 2. For industrial consumers in Spain, there is no likelihood of confusion between the figurative sign Faber, in respect of which registration as a Community trade mark is sought for ‘Chemicals used in industry and science; unprocessed artificial resins; tanning substances; adhesives used in industry’ in Class 1 of the Nice Agreement, and the word mark NABER, registered earlier in Spain in respect of ‘Chemicals and adhesives used in industry; decolourising agents; artificial and synthetic resins’ in the same class of that agreement, because, first, the additional graphic or figurative element which is specific to the mark applied for is capable of constituting a distinguishing feature sufficient to preclude visual similarity between the signs at issue in the eyes of the relevant public and, second, a certain phonetic resemblance between the conflicting signs does not suffice to neutralise the distinction brought about by the first letter, since the sounds produced by the consonants ‘F’ and ‘N’ are clearly distinct, so that, having regard to the fact that the relevant public is a specialised public, with a greater level of attention than that of the average consumer, that phonetic difference between the two signs, and above all the marked visual difference resulting from the significant figurative aspect specific to one of the signs are sufficient for a finding, following a global assessment, that the signs constituting the marks at issue, each considered as a whole and taking into account in particular their distinctive and dominant elements, are not similar and that, consequently, one of the essential conditions for applying Article 8(1)(b) of Regulation No 40/94 has not been satisfied. (see paras 43, 48, 50-51)