Judgment — ECLI:EU:T:2003:264
Date: 2003-10-14
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;Appeals before the Boards of Appeal
Procedure: Action for annulment - decision unnecessary;Action for annulment - successful
Origin: Provisional data;United States

Summary of the Judgment 
1. Community trade mark — Appeal procedure — Appeal brought against a decision of 
the Opposition Division — Decision of the Board of Appeal going beyond the scope 
of the opposition — Unlawful 
(Council Regulation No 40/94, Arts 43(5), 62(1) and 74(1)) 
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SUMMARY — CASE T-292/01 
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 — Risk of 
confusion with the earlier mark — Similarity between the marks at issue — Whether 
semantic differences capable of counteracting visual or aural similarities — Conditions 
(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 — Risk of 
confusion with the earlier mark — Word marks 'BASS' and 'FASH' 
(Council Regulation No 40/94, Art. 8(1)(b)) 
4. Community trade mark — Appeal procedure — Appeal against a decision of the 
Opposition Division — Suspensive effect — Contested decision taking effect follow­
ing the final refusal of the Board of Appeal — Refusal incorporated into a decision of 
the Court of First Instance giving judgment by virtue of its power of alteration 
(Council Regulation No 40/94, Arts 57(1), 59 and 63(3)) 
1. When deciding on an appeal against a 
decision of the Opposition Division of 
the Office for Harmonisation in the 
Internal Market (Trade Marks and 
Designs) the Board of Appeal of the 
Office cannot give a ruling which goes 
beyond the scope of the opposition, as 
such an ultra petita decision is unlaw­
ful. 
As it is apparent from reading the first 
sentence of Article 43(5) in conjunction 
with the first sentence of Article 62(1) 
and Article 74(1) in fine of Regulation 
No 40/94 on the Community trade 
mark, the Board of Appeal may reject 
the trade mark application only to the 
extent applied for by the opponent in 
its opposition to the registration of that 
mark. 
(see paras 23-24) 
2. When assessing the likelihood of con­
fusion, within the meaning of 
Article 8(1)(b) of Regulation No 40/94 
on the Community trade mark, visual 
and aural similarities between the two 
work marks may be counteracted to a 
large extent by the conceptual differ­
ences which distinguish the marks. For 
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PHILLIPS-VAN HEUSEN v OHIM — PASH TEXTILVERTRIEB UND EINZELHANDEL (BASS) 
there to be such a counteraction, at 
least one of the marks at issue must 
have, from the point of view of the 
relevant public, a clear and specific 
meaning so that the public is capable of 
grasping it immediately. 
The fact that the word mark does not 
refer to any characteristic of the goods 
in respect of which the registration of 
the marks in question has been made or 
applied for does not prevent the rel­
evant public from immediately grasp­
ing the meaning of that word mark. For 
such a counteraction to occur, it is not 
necessary, however, that the other 
mark also has, from the point of view 
of the relevant public, a meaning which 
is clear and specific. 
(see para. 54) 
3. There is no likelihood of confusion by 
the German public between the word 
mark 'BASS' for which registration as a 
Community trade mark is applied for 
'clothing' falling with Class 25 within 
the meaning of the Nice Agreement, 
and the word mark 'PASH' previously 
registered in Germany to designate 
clothing, also made of leather, belts 
for clothing, footwear, headgear falling 
within the same class, in so far as the 
degree of similarity between the marks 
is not sufficiently great for the Court to 
find that the public might believe that 
the goods in question come from the 
same undertaking or, as the case may 
be, from undertakings which are econ­
omically linked, or given the difference 
between the marks that finding is not 
invalidated by the fact that the goods 
covered by the mark applied for are 
identical to some of the goods desig­
nated by the earlier trade mark. 
(see paras 56-57) 
4. In the light of the second sentence of 
Article 57(1) of Regulation No 40/94 
on the Community trade mark, under 
which the appeal brought before the 
Office for Harmonisation in the Inter­
nal Market has suspensive effect, a 
decision capable of forming the subject 
of such an appeal, such as the Opposi­
tion Division's decision, takes effect if 
no appeal has been brought before the 
Office within the time-limit referred to 
in the first sentence of Article 59 of 
Regulation No 40/94, or if such an 
appeal has been dismissed by a defini­
tive decision of the Board of Appeal. In 
that regard, a decision of the Court of 
First Instance which, by virtue of the 
power of alteration, dismisses the 
appeal brought before the Office must 
be deemed as a decision to that effect 
by the Board of Appeal. 
(see para. 60) 
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