Judgment — ECLI:EU:T:2003:280
Date: 2003-10-22
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;Action for annulment - inadmissible
Origin: France

Summary of the Judgment 
1. 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 — Verbal mark 'ASTERIX' and figurative mark 
consisting of the verbal element 'starix' and graphical elements 
(Council Regulation No 40/94, Art. 8(1)(b)) 
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SUMMARY — CASE T-311/01 
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 — Reputation of the earlier mark — Relevance 
(Council Regulation No 40/94, Art. 8(1)'(b)) 
3. Community trade mark — Appeal procedure — Action brought before the Commu­
nity Courts — Jurisdiction of the Court of First Instance — Review of the legality of 
the decisions taken by the Boards of Appeal with regard to the issues of law raised 
before them 
(Council Regulation No 40/94, Art. 63) 
1. There is no risk of confusion, within 
the European public, between the figu­
rative sign consisting of a red coloured 
oval followed by the word 'starix' in 
italics, registration of which as a Com­
munity trade mark has been applied for 
in respect of goods and services coming 
within Classes 9 and 38 of the Nice 
Agreement, and the verbal mark 
'ASTERIX', which was previously reg­
istered as a Community trade mark to 
designate goods and services coming 
within, inter alia, Classes 9 and 41 of 
that agreement, in so far as, even 
though there is a more or less marked 
similarity, possibly even to the point of 
identity, between the goods and ser­
vices covered by the conflicting trade 
marks, the visual, phonetic and con­
ceptual differences between the marks 
are sufficient to rule out any such risk, 
with the result that one of the essential 
conditions for the application of 
Article 8(1)(b) of Regulation No 40/94 
on the Community Trade Mark has not 
been satisfied. 
(see paras 48, 59, 62) 
2. A risk of confusion, within the meaning 
of Article 8(1)(b) of Regulation 
No 40/94 on the Community trade 
mark, presupposes that the signs as 
well as the goods and services desig­
nated are identical or similar, and the 
reputation of a mark is one factor 
which must be taken into account 
when determining whether the simi­
larity between the signs or between the 
goods and services is sufficient to give 
rise to a risk of confusion. By contrast, 
where the signs in dispute cannot in 
any way be regarded as identical or 
similar, the fact that the earlier mark is 
widely known or enjoys an extensive 
reputation within the European Union 
cannot alter the overall assessment of 
the risk of confusion. 
(see para. 61) 
3. The purpose of an action brought 
bpfnrp the Cnnrf of First Instance 
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ÉDITIONS ALBERT RENÉ v OHIM — TRUCCO (STARIX) 
against a decision of a Board of Appeal 
of the Office for Harmonisation in the 
Internal Market (Trade Marks and 
Designs) is to obtain a review of the 
legality of such a decision within the 
meaning of Article 63 of Regulation 
No 40/94 on the Community trade 
mark. While, under Article 63(3) of 
that regulation, the Court of First 
Instance 'has jurisdiction to annul or 
to alter the contested decision', that 
paragraph must be construed in the 
light of Article 63(2), which provides 
that an 'action may be brought on 
grounds of lack of competence, 
infringement of an essential procedural 
requirement, infringement of the 
Treaty, of this regulation or of any 
rule of law relating to their application 
or misuse of power', and in the context 
of Articles 229 EC and 230 EC. The 
Court's review of the legality of a 
decision by a Board of Appeal must 
therefore be carried out with regard to 
the issues of law raised before the 
Board of Appeal. 
(see para. 70) 
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