Judgment — ECLI:EU:T:2002:260
Date: 2002-10-23
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;Actions before the Community Courts;General;Similarity between goods or services;Opposition proceedings
Procedure: Action for annulment - successful
Origin: Germany

Summary of the Judgment 
1. Community trade mark — Appeal procedure — Appeals before the Community 
judicature — Jurisdiction of the Court of First Instance — Whether it may issue 
directions to OHIM — Excluded 
(Council Regulation No 40/94, Art. 63(6)) 
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SUMMARY — CASE T-388/00 
2. Community trade mark — Observations from third parties and opposition — 
Examination of opposition — Proof of use of the earlier mark — Period set by the 
Office — Peremptory nature — Challenging of evidence by the trade mark appli­
cant — Not relevant 
(Council Regulation No 40/94, Art. 43(2); Commission Regulation No 2868/95, 
Art. 1, Rule 22(1)) 
3. Community trade mark — Observations from third parties and opposition — 
Examination of opposition — Proof of use of the earlier mark — Reference to 
documents produced in another case — Whether permissible 
(Council Regulation No 40/94, Arts 42 and 43) 
4. Community trade mark — Definition and acquisition of the Community trade 
mark — Relative grounds for refusal — Opposition by the proprietor of an identical 
or similar earlier mark registered for identical or similar goods or services — 
Likelihood of confusion with the earlier mark — Assessment criteria 
(Council Regulation No 40/94, Art. 8(1)(b) and 2(a)(ii)) 
5. Community trade mark — Definition and acquisition of the Community trade 
mark — Relative grounds for refusal — Opposition by the proprietor of an identical 
or similar earlier mark registered for identical or similar goods or services — Similarity 
between the goods or services and between the marks in question — Assessment 
criteria 
(Council Regulation No 40/94, Art. 8(1) (b)) 
6. Community trade mark — Definition and acquisition of the Community trade 
mark — Relative grounds for refusal — Opposition by the proprietor of an identical 
or similar earlier mark registered for identical or similar goods or services — 
Likelihood of confusion with the earlier mark — Acronyms ELS and ILS 
(Council Regulation No 40/94, Art. 8(1) (b)) 
1. Where an action is brought before the 
Community judicature contesting a 
decision of one of the Boards of Appeal 
of the Office for Harmonisation in the 
Internal Market (Trade Marks and 
Designs), the Office is required under 
Article 63(6) of Regulation No 40/94 
to take the measures necessary to 
comply with the judgment of the 
Court. Accordingly, the Court of First 
Instance is not entitled to issue direc­
tions to the Office. 
(see para. 19) 
II - 4302 
INSTITUT FUR LERNSYSTEME v OHIM — EDUCATIONAL SERVICES (ELS) 
2. Rule 22(1) of Regulation No 2868/95 
implementing Council Regulation (EC) 
No 40/94 on the Community trade 
mark provides that, where the owner 
of an earlier mark opposing regis­
tration of a Community trade mark 
has to furnish proof of use of the mark, 
the Office for Harmonisation in the 
Internal Market (Trade Marks and 
Designs) is to invite him to do so 
within such period as it specifies. By 
virtue of that provision, read in con­
junction with Article 43(2) of Regu­
lation No 40/94, if evidence establish­
ing use of the mark is not produced 
within the period specified by the 
Office the opposition must be rejected. 
That peremptory nature of the time-
limit laid down by the rule in question 
means that the Office cannot take 
account of evidence that is submitted 
late. More particularly, the fact that, in 
its comments on the evidence of use of 
the mark submitted by the opponent, 
the applicant challenges that evidence, 
cannot have the effect of causing that 
period to start to run afresh and of 
allowing the opponent to supplement 
the evidence of use submitted within 
the period specified by the Office. 
(see paras 28-29) 
3. If, in opposition proceedings under 
Articles 42 and 43 of Regulation 
No 40/94 on the Community trade 
mark brought by the owner of an 
earlier mark, he has to prove use of 
the mark, and if he has already had to 
prove such use in earlier proceedings, 
the opponent may refer to documents 
already filed in those proceedings 
where he is called upon to provide 
evidence of use of that earlier trade 
mark on a subsequent occasion. 
(see para. 31) 
4. Paragraphs (1)(b) and (2)(a)(ii) of 
Article 8 of Regulation No 40/94 on 
the Community trade mark provide: 
'Upon opposition by the proprietor of 
an earlier trade mark, the trade mark 
applied for shall not be registered if 
because of its identity with or similarity 
to the earlier trade mark and the 
identity or similarity of the goods or 
services covered by the trade marks 
there exists a likelihood of confusion 
on the part of the public in the territory 
in which the earlier trade mark is 
protected; the likelihood of confusion 
includes the likelihood of association 
with the earlier trade mark.' 'Earlier 
trade marks' means 'trade marks regis­
tered in a Member State... with a date 
of application for registration which is 
earlier than the date of application for 
registration of the Community trade 
mark'. 
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SUMMARY — CASE T-388/00 
The likelihood that the public might 
believe that the goods or services in 
question come from the same under­
taking or, as the case may be, from 
economically-linked undertakings, 
constitutes a likelihood of confusion 
and must be assessed globally, taking 
into account all factors relevant to the 
circumstances of the case. That global 
assessment implies some interdepen­
dence between the factors taken into 
account and in particular similarity 
between the trade marks and between 
the goods or services covered. A lesser 
degree of similarity between these 
goods or services may be offset by a 
greater degree of similarity between the 
marks, and vice versa. 
(see paras 44-46) 
5. Where the owner of an earlier mark 
within the meaning of Article 8(1)(b) 
of Regulation No 40/94 on the Com­
munity trade mark brings opposition 
proceedings, in assessing the similarity 
of the goods or services concerned, all 
the relevant factors pertaining to the 
relationship between those goods and 
services are to be taken into account. 
Those factors include, inter alia, their 
nature, their end users and their 
method of use and whether they are 
in competition with one another or are 
complementary. 
As regards comparison of the conflict­
ing signs, it must be observed that, 
according to the case-law of the Court 
of Justice, the global assessment of the 
likelihood of confusion must, as 
regards the visual, aural or conceptual 
similarity of the marks in question, be 
based on the overall impression created 
by them, bearing in mind, in particular, 
their distinctive and dominant com­
ponents. It is possible that mere aural 
similarity between trade marks may 
create a likelihood of confusion. 
(see paras 51, 62) 
6. For the German-speaking public, there 
is aural and visual similarity between 
the acronym ELS which was sought to 
be registered as a Community trade 
mark for 'Educational services, namely 
providing English language instruction' 
(Class 41 of the Nice Agreement) and 
for 'Educational textbooks and printed 
materials namely student workbooks, 
catalogues, teaching manuals, printed 
instruction materials and charts and 
booklets designed for students seeking 
to learn English as a second language.' 
(Class 16 of the Nice Agreement), and 
the composite mark comprising a figu­
rative sign containing the acronym 
'ILS', registered previously in Germany 
for the services 'development and run­
ning of correspondence courses' (Class 
41). 
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INSTITUT FÜR LERNSYSTEME v OHIM — EDUCATIONAL SERVICES (ELS) 
Therefore, having regard, first, to the 
identity between the services compris­
ing 'development and running of cor­
respondence courses' designated for the 
earlier mark and 'educational services, 
namely providing English language 
instruction' designated by the mark 
claimed, and to the similarity between 
the services 'development and running 
of correspondence courses' and 'edu­
cational textbooks and printed 
materials namely student workbooks, 
catalogues, teaching manuals, printed 
instruction materials and charts and 
booklets designed for students seeking 
to learn English as a second language' 
designated by the mark claimed, and 
second, to the similarity between the 
signs in question, the differences 
between those signs are not sufficient 
to dispel the likelihood of confusion in 
the mind of the targeted public, so that 
to hold that there is no likelihood of 
confusion constitutes an infringement 
of Article 8(1)(b) of Regulation 
No 40/94 on the Community trade 
mark. 
(see paras 68, 73, 75, 78) 
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