Judgment — ECLI:EU:T:2006:105
Date: 2006-04-05
Language of the case: Italian
Court formation: First Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Figurative marks applied for
Procedure: Action for annulment - unfounded
Origin: Italy

Summary of the Judgment 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 (Council Regulation No 40/94, Art. 8(1)(b)) There is no likelihood of confusion on the part of the average consumer between, on the one hand, the figurative mark including the word element ‘SELEZIONE ORO Barilla’, in respect of which registration as a Community trade mark is sought for ‘Pasta, flour and preparations made from cereals, bread, pastry and confectionery; yeast, baking-powder; sauces (condiments)’ in Class 30 of the Nice Agreement and, on the other, the word mark ORO registered previously in Italy as an international trade mark having effect in, inter alia, Austria, Germany, Spain, France and the Benelux, for ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, biscuits, tarts, pastry, sweets, confectionery, ices, honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces, spices; ice’ in Class 30, and the word mark ORO SAIWA, registered previously in Italy for ‘Milk biscuits, biscuits, bread, pastry and confectionery’ also in Class 30, despite the goods being materially identical. There are important visual and phonetic differences in the way consumers perceive the conflicting marks and the mere presence of the word ‘oro’ is not capable of giving rise to similarity between them. Furthermore, the existence of a weak degree of conceptual similarity between the marks is not such as to offset their visual and phonetic differences. Finally, the word ‘oro’, which serves primarily to define a superior range of goods as distinct from a standard range, does not have an independent distinctive function in the trade mark applied for, but must be understood as being appended to the descriptive term ‘selezione’ to indicate to consumers that a top-of-the-range product is at issue. Accordingly, the distinctiveness of the sign is due to the word ‘Barilla’. (see paras 30, 32, 39-41)