Judgment — ECLI:EU:C:2011:405
Date: 2011-06-16
Language of the case: Italian
Court formation: Fourth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - successful
Origin: Germany

Summary of the Judgment 1. Appeals – Grounds – Error of law – Failure to take into account all the factors relevant to the assessment of the likelihood of confusion within the meaning of Article 8(1)(b), Regulation No 40/94 – Distortion of the content of an act (Art. 256 TFEU; Statute of the Court of Justice, Art. 58, first para.) 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 – Likelihood of association – Earlier trade marks with characteristics enabling them to be regarded as part of the same ‘series’ or ‘family’ – Conditions (Council Regulation No 40/94, Art. 8(1)(b)) 1. The existence of a likelihood of confusion on the part of the public, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, must be assessed globally, taking into account all factors relevant to the circumstances of the case. Whereas the evaluation of those factors is an issue of fact that cannot be reviewed by the Court, failure to take all those factors into account, on the other hand, constitutes an error of law and may, as such, be raised before the Court in the context of an appeal. This also applies to the claim according to which the General Court distorted the analysis carried out by the Board of Appeal, as distortion of the content of an act too constitutes an error of law. (see paras 45-46) 2. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark. When opposition is based on the existence of several trade marks with shared characteristics enabling them to be regarded as part of the same ‘family’ or ‘series’ of trade marks, account should be taken, in the assessment of the likelihood of confusion, of the fact that, in the case of a ‘family’ or ‘series’ of trade marks, a likelihood of confusion results from the fact that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and consider, erroneously, that the latter trade mark is part of that family or series of marks. (see paras 53-54)