Judgment — ECLI:EU:T:2002:318
Date: 2002-12-12
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Actions before the Community Courts;Identity of marks and of goods or services;Likelihood of confusion with an earlier mark
Procedure: Action for annulment - unfounded
Origin: France

Summary of the Judgment 
1. Community trade mark — Appeals procedure — Appeals before the Community 
judicature — Procedural role of the Office — Defendant — Application for the 
annulment or alteration of decisions taken by the Boards of Appeal — Inadmissible 
(Council Regulation No 40/94, Art. 63(3) and (4)) 
II - 5275 
SUMMARY — CASE T-110/01 
2. Community trade mark — Definition and acquisition of the Community trade 
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 — 
Similarity between the trade marks concerned — Possibility of a visual similarity 
between a figurative mark and a word mark 
(Council Regulation No 40/94, Art. 8(1)(b)) 
3. Community trade mark — Definition and acquisition of the Community trade 
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 — Reputation of the earlier mark — 
Not relevant where no similarity between the marks concerned 
(Council Regulation No 40/94, Art. 8(1)(b)) 
4. Community trade mark — Definition and acquisition of the Community trade 
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 — Composite word and figurative mark 
containing the word 'HUBERT' and word mark 'SAINT-HUBERT 41' 
(Council Regulation No 40/94, Art. 8(1)(b)) 
1. In appeal proceedings concerning 
Community trade marks, directed 
against the decision of a Board of 
Appeal of the Office for Harmon­
isation in the Internal Market (Trade 
Marks and Designs), the Office's appli­
cation for alteration of the contested 
decision is inadmissible. The Office 
does not have locus standi to apply 
for the annulment or alteration of 
decisions taken by the Boards of 
Appeal, but acts as defendant before 
the Court. 
(see paras 23-25) 
2. The assertion that a figurative mark 
cannot display any visual similarity 
whatsoever to a word mark cannot be 
accepted in the context of the examin­
ation of a notice of opposition filed by 
the proprietor of the earlier mark under 
Article 8(1)(b) of Regulation No 40/94 
on the Community trade mark. It must 
be held that it is possible to consider 
and determine whether there is any 
visual similarity between a figurative 
mark and another word mark since the 
two types of mark have graphic form 
capable of creating a visual impression. 
(see paras 50-51) 
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VEDIAL v OHIM — FRANCE DISTRIBUTION (HUBERT) 
3. Although it is true that, in the context 
of the examination of a notice of 
opposition filed by the proprietor of 
the earlier mark under Article 8(1)(b) 
of Regulation No 40/94 on the Com­
munity trade mark, the reputation of 
the earlier mark is a factor which must 
be taken into account when determin­
ing whether the similarity between the 
signs or between the goods and services 
is sufficient to give rise to a likelihood 
of confusion, such a reputation has no 
effect on the global assessment of the 
likelihood of confusion where the con­
flicting signs cannot in any way be 
regarded as identical or similar from 
the visual, aural or conceptual points of 
view. 
(see paras 64-65) 
4. There is no likelihood of confusion for 
the French public between the mark 
consisting of a composite sign compris­
ing the name 'HUBERT' in stylised 
black characters outlined in white, in 
which the letters are in upper case and 
surmounted by the bust of a chef, 
beaming and with his right arm raised 
and thumb turned up, for which regis­
tration as a Community trade mark has 
been applied in respect of certain goods 
in Classes 29, 30 and 42 of the Nice 
Agreement, and the word mark 
'SAINT-HUBERT 41' registered pre­
viously in France in respect of goods in 
Class 29 of that agreement. 
Even though there is identity and 
similarity between the goods covered 
by the conflicting marks, the visual, 
aural and conceptual differences 
between the signs constitute sufficient 
grounds for holding that there is no 
likelihood of confusion in the mind of 
the targeted public, so that one of the 
conditions for applying Article 8(1)(b) 
of Regulation No 40/94 on the Com­
munity trade mark has not been satis­
fied. 
(see paras 63, 66) 
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