Judgment — ECLI:EU:T:2006:300
Date: 2006-10-10
Language of the case: English
Court formation: Fifth 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
Procedure: Action for annulment - unfounded
Origin: Germany

Summary of the Judgment 1. Community trade mark – Appeals procedure (Rules of Procedure of the Court of First Instance, Art. 135(4); Council Regulation No 40/94, Arts 8(1)(b) and 74) 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 registered for identical or similar goods or services (Council Regulation No 40/94, Art. 8(1)(b)) 1. Where it is based on Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, opposition to the registration of a trade mark requires the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to adjudicate on whether the goods and services covered by the conflicting marks are similar or identical. That is also the case even where the Office, or one of the parties to the proceedings, considers it unnecessary to examine that question because of the considerable differences between the marks, which, in any event, rule out a likelihood of confusion. Next, the fact that the applicant for an opposed Community trade mark, after agreeing in the proceedings before the Opposition Division that the goods or services covered by the conflicting marks may potentially be identical, states before the Board of Appeal that the question whether the goods or services are similar may be left undecided on account of the alleged differences between the marks, does not in any way divest the Office of the power to adjudicate on whether the goods or services covered by those marks are similar or identical. Likewise, therefore, that fact does not deprive that party of the right to challenge, before the Court of First Instance and in the factual and legal context of the dispute before the Board of Appeal, the findings of that body on this point. Such a finding is not, in fact, contrary to the prohibition laid down in Article 135(4) of the Rules of Procedure of the Court of First Instance on altering, before the Court of First Instance, the subject-matter of the dispute as it was brought before the Board of Appeal, pursuant to Article 74 of Regulation No 40/94. (see paras 41-43) 2. There is on the part of all consumers within the Community a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the word mark ARMAFOAM, for which registration is sought as a Community trade mark for ‘foam goods made from elastomerics, thermoplastics or thermosets as system component or as end use application’ in Class 20 of the Nice Agreement, and the word mark NOMAFOAM, previously registered as a Community trade mark for all goods in Classes 17, 19, 20, 27 and 28 of that agreement, in view of the fact that, first, the goods covered by the conflicting marks are very similar, if not identical, and, second, those marks are both visually and phonetically similar, at the very least as far as the non-English-speaking public is concerned. (see paras 34, 55, 67-68)