Judgment — ECLI:EU:C:2011:177
Date: 2011-03-24
Language of the case: English
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded
Origin: Italy

Summary of the Judgment 1. Appeals – Interest in bringing proceedings – Condition – Appeal which may procure an advantage for the party bringing it – Declaration of invalidity of a Community trade mark – Surrender of the Community trade mark – Different legal effects 2. 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 with a reputation – Protection of the earlier mark with a reputation extended to goods or services which are not similar – Conditions – Link between the marks (Council Regulation No 40/94, Arts 8(1)(b) and (5)) 3. Appeals – Grounds – Mistaken assessment of the facts – Inadmissibility – Review by the Court of Justice of the assessment of the facts put before the General Court – Possible only where there is distortion – Ground of appeal alleging distortion of the facts – Necessity of indicating precisely the evidence alleged to have been distorted and showing the errors of appraisal which led to that distortion (Art. 256(1), second subpara., TFEU; Statute of the Court of Justice, Art. 58, first subpara.; Rules of Procedure of the Court of Justice, Art. 112(1), first subpara., point (c)) 4. 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 – Similarity of the marks concerned – Criteria for assessment (Council Regulation No 40/94, Art. 8(1)(b)) 5. 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 – Likelihood of confusion with the earlier mark – Likelihood of association – Earlier marks with characteristics enabling them to be regarded as part of the same ‘series’ or ‘family’ (Council Regulation No 40/94, Art. 8(1)(b)) 1. The interest in bringing proceedings constitutes a condition of admissibility that must last until the court has given judgment on the substance. Such an interest exists as long as the appeal may, if successful, procure an advantage for the party bringing it. A party retains its interest in appealing against a judgment dismissing its action for annulment of a decision which rejected an application for a declaration of invalidity made by that party against registration of a Community trade mark even if the proprietor of that mark surrenders it. The surrender is not, in itself, capable of rendering the appeal devoid of purpose, as the effects of a surrender and those of a declaration of invalidity are not the same. That is to say, whereas a Community trade mark which has been surrendered ceases to have effects only as from the registration of that surrender, a Community trade mark which has been declared invalid will be deemed, in accordance with Article 54(2) of Regulation No 40/94 on the Community trade mark, not to have had any effects from the outset, with all the legal consequences that such invalidity implies. (see paras 39-41, 43-44) 2. The existence of a similarity between the earlier mark and the challenged mark is a precondition for the application both of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark and of Article 8(5) of that regulation. That condition of similarity between the mark and the sign requires, in the context both of Article 8(1)(b) and of Article 8(5) of Regulation No 40/94, the existence, in particular, of elements of visual, aural or conceptual similarity. It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 40/94 is conditional upon a finding of such a degree of similarity between the marks at issue that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) of Regulation No 40/94 or under Article 8(5). The existence of a link between the marks at issue must, like the existence of a likelihood of confusion, be assessed globally, account being taken of all factors relevant to the circumstances of the case, which include not only the degree of similarity between the conflicting marks, but also the degree of the earlier mark’s distinctive character and the strength of its reputation. As regards in particular the strength of the earlier mark’s reputation, for the purposes of assessing whether there is a link between the marks at issue, it may be necessary to take into account the strength of the earlier mark’s reputation in order to determine whether that reputation extends beyond the public targeted by that mark. It is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the marks at issue, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered. Consequently, the reputation and the distinctive character of the earlier mark constitute relevant factors for the purposes of assessing, not whether the marks at issue are similar, but whether the relevant section of the public makes a link between them. (see paras 51-54, 56-58) 3. It is apparent from the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal lies on a point of law only. The General Court therefore has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence placed before it. The appraisal of those facts and the assessment of that evidence thus do not, save where they distort the evidence, constitute a point of law which, as such, is open to review by the Court of Justice on appeal. Under the second subparagraph of Article 256(1) TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice and point (c) of the first subparagraph of Article 112(1) of the Rules of Procedure of the Court of Justice, the appellant must indicate precisely the evidence alleged to have been distorted by the General Court and show the errors of appraisal which, in his view, led to that distortion. (see paras 73, 78) 4. In order to assess the degree of similarity between the marks at issue, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, account being taken of the category of goods or services in question and the circumstances in which they are marketed. The visual, aural and conceptual similarities between the signs at issue must be the subject of a global assessment in which the assessment of any aural similarity is but one of the relevant factors. (see paras 85-86) 5. The existence of a ‘family’ or a ‘series’ of trade marks is an element which must be taken into account for the purposes of assessing the likelihood of confusion. In those circumstances, 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 and may consider, erroneously, that that trade mark is part of that family or series of marks. However, that element is irrelevant for the purposes of assessing the existence of a similarity between the earlier mark and the challenged mark. Consequently, it is only if there is some similarity between the marks at issue that the General Court must take into account, in the global assessment of a likelihood of confusion or of a link being made between those marks, the existence of a ‘family’ or ‘series’ of trade marks. (see paras 97-99)