Judgment — ECLI:EU:T:2004:62
Date: 2004-03-03
Language of the case: English
Court formation: Fourth 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 marks
Procedure: Action for annulment - unfounded
Origin: Germany

Summary of the Judgment 1. Community trade mark – Definition and acquisition of Community trade mark – Relative grounds for refusal – Opposition by the holder of an identical or similar earlier mark registered for identical or similar goods or services – Earlier mark constituted by a Community trade mark – Refusal of the application to register a trade mark due to a relative ground for refusal even where the relative ground for refusal obtains in only part of the Community (Council Regulation No 40/94, Art. 8) 2. Community trade mark – Definition and acquisition of Community trade mark – Relative grounds for refusal – Opposition by the holder of an identical or similar earlier mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Similarity between the marks concerned – Whether semantic differences capable of counteracting aural similarities – Conditions (Council Regulation No 40/94, Art. 8(1)(b)) 3. Community trade mark – Definition and acquisition of Community trade mark – Relative grounds for refusal – Opposition by the holder of an identical or similar earlier mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Word mark ‘ZIRH’ and figurative mark including the term ‘SIR’ (Council Regulation No 40/94, Art. 8(1)(b)) 1. When, in opposition proceedings brought against the registration of a Community trade mark under Article 42 et seq. of Regulation No 40/94, the earlier trade mark is a Community trade mark and the relevant territory for assessing the likelihood of confusion is therefore the whole of the European Union, registration must be refused, taking into consideration the unitary character of the Community trade mark, even where the ground for refusal obtains in only part of the Community. (see paras 34-36) 2. In an assessment of the likelihood of confusion for the purpose of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the phonetic similarities between two trade marks may be counteracted by the conceptual differences between the trade marks in question. For there to be such a counteraction, at least one of the marks must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately. In that regard, the fact that the trade mark does not refer to any characteristic of the goods in respect of which it has been registered or in respect of which registration has been applied for does not prevent the relevant public from immediately grasping the meaning of that mark. The fact that one of the marks has such a meaning is sufficient – where the other mark does not have such a meaning or only a totally different meaning – to counteract to a large extent the phonetic similarities between the two marks. (see paras 49-50) 3. There is no likelihood of confusion on the part of the European public between the word mark ‘ZIRH’, registration of which as a Community trade mark has been applied for in respect of certain goods belonging to Classes 3 and 42 of the Nice Agreement, and the figurative mark containing the verbal element ‘SIR’ registered previously as a Community trade mark for goods in Class 3 of that agreement in so far as the degree of similarity of the marks is not sufficiently great to warrant a finding that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from undertakings that are economically linked and where, given the differences between the marks, that assessment is not undermined by the fact that the goods and services covered by the trade mark applied for are partly similar and partly identical to the goods covered by the earlier trade mark. (see paras 55-57)