Judgment — ECLI:EU:T:2008:399
Date: 2008-09-24
Language of the case: English
Court formation: Eighth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks applied for
Procedure: Action for annulment - unfounded

Summary of the Judgment Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity (Council Regulation No 40/94, Arts 8(1)(b) and 52(1)(a)) The word mark O STORE should not have been registered as a Community trade mark in respect of ‘Retail and wholesale services, including on-line retail store services’ and services of ‘retail and wholesale of clothing, headwear, footwear, athletic bags, backpacks and knapsacks, and wallets’ falling within Class 35 of the Nice Agreement, because of the existence of the relative ground for refusal referred to in Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, in so far as there is on French territory, for the average consumer, a likelihood of confusion within the meaning of that article between the trade mark O STORE and the word mark THE O STORE, registered previously in France in respect of goods falling within Classes 18 and 25 of that Agreement. Although the nature, purpose and method of use of the services of ‘retail and wholesale of clothing, headwear, footwear, athletic bags, backpacks and knapsacks and wallets’ covered by the contested Community trade mark, on the one hand, and of goods covered by the earlier trade mark, that is ‘clothing, headwear, footwear, rucksacks, all-purpose sports bags, travelling bags, wallets’, on the other, differ, it is indisputable that those services and goods display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Also, on account of the very general wording, the ‘Retail and wholesale services, including on-line retail store services’ can include all goods, including those covered by the earlier mark. Therefore, those services display similarities to the goods concerned. In addition, the signs in dispute are very similar since they contain the identical element ‘o store’, the only difference being the omission, in the contested Community trade mark, of the non-distinctive article ‘the’. It cannot be excluded that the goods in question are sold in the same sales outlets as those in which the retail services are offered; that could in particular be the case if the goods covered by the trade mark THE O STORE are sold by means of O STORE services covered by the contested Community trade mark, thereby creating a likelihood of confusion in consumers’ minds. Even supposing that the goods covered by the earlier trade mark THE O STORE are not sold by means of the O STORE services covered by the contested Community trade mark, the relevant public, when presented with retail services, concerning clothes or shoes in particular, and covered by the trade mark O STORE, could believe that those services are offered by the same undertaking as that which sells those same goods under the trade mark THE O STORE or by a related undertaking. (see paras 45, 47, 57, 61, 71, 74-75)