Opinion of the Advocate General — ECLI:EU:C:2007:205
Date: 2007-03-29
Language of the case: Italian
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Italy

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 identical or similar earlier marks registered for identical or similar goods or services (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 identical or similar earlier marks registered for identical or similar goods or services (Council Regulation No 40/94, Art. 8(1)(b)) 3. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark (Council Regulation No 40/94, Art. 15(2)(a)) 4. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark (Council Regulation No 40/94, Arts 43(2) and (3), and 56(2)) 1. When assessing the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the assessment of any aural similarity is but one of the relevant factors for the purpose of the global assessment. Therefore, one cannot deduce that there is necessarily a likelihood of confusion where mere phonetic similarity between two signs is established. (see paras 35-37) 2. Whilst it is true that, in the case of opposition to an application for registration of a Community trade mark based on the existence of only one earlier trade mark that is not yet subject to an obligation of use, the assessment of the likelihood of confusion is to be carried by comparing the two marks as they were registered, the same does not apply where the opposition is based on the existence of several trade marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ or ‘series’ of marks. Where there is a ‘family’ or ‘series’ of trade marks, the likelihood of confusion results from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for or considers erroneously that that trade mark is part of that family or series of marks. No consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market. (see paras 62-64) 3. Whilst it is possible, as a result of Article 15(1) and 2(a) of Regulation No 40/94 on the Community trade mark, to consider a registered trade mark as used where proof is provided of use of that mark in a slightly different form from that in which it was registered, it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former. (see para. 86) 4. In that regard a proprietor of a national registration who opposes a Community trade mark application cannot, in order to avoid the burden of proof which rests upon him under Article 43(2) and (3) of Regulation No 40/94 on the Community trade mark to prove genuine use of his earlier mark, rely on a national provision which allows the registration, as trade marks, or the existence of proper reasons for its non-use, rely on a national provisions which allows the registration, as trade marks, of signs not intended to be used in trade on account of their purely defensive function in relation to another sign which is being commercially exploited. The concept of ‘proper reasons’ mentioned in Article 43 of Regulation No 40/94 refers essentially to circumstances unconnected with the proprietor of a traded mark which prevent him from using the mark, rather than to national legislation which makes an exception to the rule that a trade mark that has not been used for a period of five years must be revoked, even where such lack of use is intentional on the part of the proprietor of the trade mark. The argument that the holder of a national registration who opposes a Community trade mark application can rely on an earlier trade mark the use of which has not been established on the ground that, under national legislation, that earlier mark constitutes a ‘defensive trade mark’ is therefore incompatible with Article 43(2) and (3) of Regulation No 40/94. (see paras 100-103)