Judgment — ECLI:EU:T:2003:288
Date: 2003-11-04
Language of the case: Spanish
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks applied for;General;Similarity between goods or services
Procedure: Action for annulment - unfounded
Origin: Spain

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 identical 
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SUMMARY — CASE T-85/02 
or similar earlier mark registered for identical or similar products or services — 
Similarity between the products in question — Assessment criteria — Complement­
ary nature of the products — Fact that products belong to a single product family — 
Relevance 
(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 identical 
or similar earlier mark registered for identical or similar products or services — 
Likelihood of confusion with the earlier mark — Distinctive character or reputation of 
the earlier mark — Relevance 
(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 for identical or similar products or services — 
Likelihood of confusion with the earlier mark — Word mark 'CASTILLO' and word 
and figurative mark containing the word 'EL CASTILLO' 
(Council Regulation No 40/94, Art. 8(l)(b)) 
1. Two products are similar within the 
meaning of Article 8(1)(b) of Regu­
lation No 40/94 on the Community 
trade mark when, in the eyes of the 
relevant public, they belong to a single 
product family and are therefore com­
plementary. 
Thus, products such as cheese, on the 
one hand, and condensed milk, on the 
other, must be regarded as similar for 
the purposes of Article 8(1)(b), since 
the public is aware of the fact that the 
products are both within the milk-
products family and may therefore 
have the same commercial origin. 
In that regard, it is irrelevant that the 
two products are consumed in different 
ways, since they may easily be regarded 
as components of a general range of 
products. 
(see paras 33, 36, 38) 
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PEDRO DÍAZ v OHLM — GRANJAS CASTELLÒ (CASTILLO) 
2. In the application of Article 8(1)(b) of 
Regulation No 40/94 on the Commu­
nity trade mark, the distinctive char­
acter of an earlier trade mark, which 
derives from the qualities inherent in 
the mark or from its reputation, must 
be taken into account when determin­
ing whether the similarity between the 
products or services covered by the two 
trade marks is sufficient to give rise to a 
likelihood of confusion. 
If it appears that the positive reputation 
of an earlier mark may, at least in some 
cases, contribute to the highly distinc­
tive character of a trade mark and, 
therefore, may increase the likelihood 
of confusion between that mark and a 
mark applied for, the coexistence on 
the market on which the earlier trade 
mark is registered of national or Com­
munity trade marks consisting of, or 
including, a verbal element common to 
the earlier trade mark and the Com­
munity trade mark applied for is not 
sufficient, by itself, to prove that there 
is no likelihood of confusion between 
the conflicting marks. 
(see paras 43-45) 
3. There exists, on the part of the Spanish 
public, a likelihood of confusion 
between the word mark 'CASTILLO', 
for which registration as a Community 
trade mark is sought for 'cheese', in 
Class 29 of the Nice Agreement, and 
the word and figurative mark contain­
ing the words 'EL CASTILLO', an 
earlier Spanish registration for 'con­
densed milk', also in Class 29, since, in 
the eyes of the relevant public, the 
products concerned may be perceived 
as having a common commercial origin 
and must therefore be regarded as 
s i m i l a r for the p u r p o s e s of 
Article 8(1)(b) of Regulation No 40/94 
on the Community trade mark and 
since, in view of the fact that (i) in the 
earlier trade mark, the component 'EL 
CASTILLO' must be regarded as domi­
nant both aurally and conceptually and 
(ii) the word 'CASTILLO' constitutes 
the mark applied for, the conflicting 
signs are, at the very least, similar for 
the purposes of Article 8(1)(b) of 
Regulation No 40/94. 
(see paras 38, 40, 48) 
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