Order — ECLI:EU:C:2008:94
Date: 2008-02-15
Language of the case: German
Court formation: Fifth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Appeals
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Germany

Appeal brought on 22 May 2007 by Carsten Brinkmann against the judgment of the Court of First Instance (Fifth Chamber) delivered on 22 March 2007 in Case T-322/05 Carsten Brinkmann v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case C-243/07 P) Language of the case: German Parties Appellant: Carsten Brinkmann (represented by: K. van Bebber, lawyer) Other parties to the proceedings: 1. Office for Harmonisation in the Internal Market (Trade Marks and Designs) 2. Terra Networks, S.A. Form of order sought set aside the judgment of the Court of First Instance (Fifth Chamber) of 22 March 2007 in Case T-322/05; annul Decision No 3646/2004 of the Office for Harmonisation in the Internal Market (OHIM) of 29 October 2004; order OHIM to pay the costs of the proceedings before OHIM and also of the proceedings before the Court of First Instance and the Court of Justice. Pleas in law and main arguments The appellant's appeal against the judgment of the Court of First Instance referred to above is based on an infringement of the provisions of Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark since, on a correct assessment, there is no likelihood of confusion within the meaning of Article 8(1)(b) of the Regulation between the conflicting marks. First, it is not the case that the goods and services covered by the trade mark applied for and those covered by the opposing mark are completely identical. Second, the members of the public concerned are professionals, namely banking experts, property owners etc, rather than the average German consumer. Third, the 'terra' element of the opponent's mark is not very distinctive. The Court of First Instance failed to take any account at all of that crucial aspect. It failed to consider the distinctiveness of the opposing mark. That is important, however, because if the earlier mark is not very distinctive, there is no likelihood of confusion in circumstances where, as a rule, such a likelihood would otherwise exist. The less distinctive a sign, the lesser the scope of protection of the mark. Where trade marks are not very distinctive, a likelihood of confusion in legal terms cannot be based on even an actual (and extreme) likelihood of confusion. Fourth, the similarity of the signs depends on the similarity in figurative, aural and conceptual terms, with reliance being placed on the overall impression in each case, although the distinctive and dominant elements must be taken into account. The opposing mark is a figurative mark, consisting of the word 'terra' and a figurative element that is approximately the same size as the word element 'terra'. The mere fact that the contested trade mark has no figurative element means that clear differences can be seen on an overall comparison of the marks. However, even if the word element 'terra' is assumed to dominate the opposing mark, there is no relevant similarity for the purposes of trade mark law. It must be emphasised that the term 'terra', which is well-known, conceptually, to the public, is indeed incorporated in its entirety into the fanciful word 'Terranus'. However, the 'terra' sign has no independent, distinctive position in the 'Terranus' mark. Furthermore, the public is accustomed to the fact that terms which are derived from a certain root can acquire an entirely different meaning as a result of a variation, thereby losing any conceptual connection with the original term. ____________