Judgment — ECLI:EU:T:2003:7
Date: 2003-01-15
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Actions before the Community Courts;Identity of marks and of goods or services;Likelihood of confusion with an earlier mark
Procedure: Action for annulment - unfounded
Origin: Germany

Summary of the Judgment 
1. Community trade mark — Appeals procedure — Appeals before the Community 
Courts — Opposition procedure — No position adopted by the Office — Forms of 
order sought inadmissible — Action to be examined because of application for 
dismissal by the intervener 
(Rules of Procedure of the Court of First Instance, Art. 134(4)) 
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SUMMARY — CASE T-99/01 
2. 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 — Highly distinctive character of the 
earlier mark — Assessment criteria 
(Council Regulation No 40/94, Art. 8(1)(b)) 
3. 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 — Figurative mark 'MYSTERY' and 
word mark 'Mixéry' 
(Council Regulation No 40/94, Art. 8(1) (b)) 
1. If, in an action brought by the propri­
etor of an earlier trade mark before the 
Community courts against a decision 
given by one of the Boards of Appeal of 
the Office for Harmonisation in the 
Internal Market (Trade Marks and 
Designs) in opposition proceedings 
brought pursuant to Articles 42 and 
43 of Regulation No 40/94 on the 
Community trade mark, the Office 
fails to express any views on either 
the applicant's claims or on the fate of 
the contested decision, but rather 
merely claims that the Court of First 
Instance should 'take account of the 
parties' pleadings', the forms of order 
sought by it are inadmissible. How­
ever, if the intervener applies for the 
action to be dismissed, the Court of 
First Instance is obliged, pursuant to 
Article 134(4) of the Rules of Pro­
cedure, to examine the dispute brought 
before it. 
(see paras 14-15) 
2. In opposition proceedings brought by 
the proprietor of an earlier mark pur­
suant to Article 8(l)(b) of Regulation 
No 40/94 on the Community trade 
mark, the possible high degree of dis­
tinctiveness of that mark must be 
established either in the light of the 
intrinsic qualities of the mark or owing 
to the reputation associated with it. 
The intrinsic qualities of that mark do 
not result from the mere fact that the 
distinctiveness of the mark is not 
reduced by the evocation of a descrip­
tive word and that it is sufficiently 
original to function as a mark. Like­
wise, the bare assertion that the mark is 
'fashionable' or the mere reference to 
certain advertising activities promoting 
the mark cannot be held to be sufficient 
to establish the distinctiveness of the 
mark resulting from the reputation 
attached to it. 
(see para. 34) 
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MYSTERY DRINKS v OHIM — KARLSBERG BRAUEREI (MYSTERY) 
3. There is, for the German public, an 
aural similarity between the sign 
'MYSTERY', which is presented in a 
figurative form including, in particular, 
a stylised capital 'M', for which regis­
tration as a Community mark is 
claimed for 'non-alcoholic beverages 
with the exception of non-alcoholic 
beer' in Class 32 of the Nice Agree­
ment, and the word mark 'Mixéry', 
registered earlier in Germany for 'beers 
and beverages containing beer' in the 
same class. 
In the light of that aural similarity, on 
the one hand, and the great similarity 
of the products, on the other, there is a 
likelihood of confusion in the minds of 
the relevant public within the meaning 
of Article 8(l)(b) of Regulation 
No 40/94 on the Community trade 
mark and that conclusion cannot be 
invalidated by the visual differences 
between the signs. 
Since the goods in question are also 
consumed after being ordered orally, 
the aural similarity of the signs in 
question is in itself sufficient to give 
rise to the likelihood of confusion. 
(see para. 48) 
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