Judgment — ECLI:EU:T:2002:262
Date: 2002-10-23
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Identity of marks and of goods or services;Likelihood of confusion with an earlier mark
Procedure: Action for annulment - unfounded
Origin: Germany

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 — 
Likelihood of confusion with the earlier mark — Assessment criteria 
(Council Regulation No 40/94, Art 8(1)(b) and 2(a)(ii)) 
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SUMMARY — CASE T-104/01 
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 — Similarity 
between the goods or services and between the marks in question — Assessment 
criteria 
(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 — 
Likelihood of confusion with the earlier mark — 'Fifties' word mark and figurative 
mark containing the words 'miss fifties' 
(Council Regulation No 40/94, Art. 8(1)(b)) 
1. Article 8 (1) (b) of Regulation No 40/94 
on the Community trade mark pro­
vides that, upon opposition by the 
proprietor of an earlier trade mark, 
the trade mark applied for is not to be 
registered 'if because of its identity 
with or similarity to the earlier trade 
mark and the identity or similarity of 
the goods or services covered by the 
trade marks there exists a likelihood of 
confusion on the part of the public in 
the territory in which the earlier trade 
mark is protected; the likelihood of 
confusion includes the likelihood of 
association with the earlier trade 
mark'. Article 8(2)(a)(ii) of Regulation 
No 40/94 provides that an earlier trade 
mark is a trade mark registered in a 
Member State with a date of appli­
cation for registration which is earlier 
than the date of application for regis­
tration of the Community trade mark. 
The risk that the public might believe 
that the goods or services in question 
come from the same undertaking or, as 
the case may be, from economically-
linked undertakings, constitutes a like­
lihood of confusion and must be 
assessed globally, taking into account 
all factors relevant to the circumstances 
of the case. That global assessment 
implies some interdependence between 
the factors taken into account, and in 
particular similarity between the trade 
marks and between the goods or ser­
vices, and, a lesser degree of similarity 
between the goods or services may be 
offset by a greater degree of similarity 
between the marks, and vice versa. 
(see paras 24-27) 
2. When considering an opposition 
brought by the owner of an earlier 
mark under Article 8(1)(b) of Regu­
lation No 40/94 on the Community 
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OBERHAUSER v OHIM — PETIT LIBERTO (FIFTIES) 
trade mark, and when assessing the 
similarity of the goods or services 
concerned, all the relevant factors 
relating to those goods or services 
themselves should be taken into 
account. Those factors include, inter 
alia, their nature, their end users and 
their method of use and whether they 
are in competition with each other or 
are complementary. 
As regards comparison of the opposing 
signs, the global assessment of the 
likelihood of confusion must, as 
regards the visual, aural or conceptual 
similarity of the marks in question, be 
based on the overall impression created 
by them, bearing in mind, in particular, 
their distinctive and dominant com­
ponents. It is possible that mere aural 
similarity between trade marks may 
create a likelihood of confusion. 
(see paras 31, 34) 
3. For the Spanish-speaking public there 
is aural and conceptual similarity 
between the word mark 'Fifties', in 
respect of which registration as a 
Community trade mark was sought 
for 'Denim clothing' in Class 25 of 
the Nice Agreement and the mark 
consisting of the composite colour 
word and figurative sign with 'miss 
fifties' as its dominant word com­
ponent, previously registered in Spain 
for 'clothing, footwear, headgear' in 
the same class. 
Having regard to the aural and con­
ceptual similarities, attributable to the 
dominant word component 'fifties', 
and the identity of the goods desig­
nated by the conflicting marks, the 
visual differences between the signs 
referred to above are not such as to 
dispel a likelihood of confusion in the 
mind of the targeted public, and the 
mark sought accordingly falls within 
the scope of Article 8(1 )(b) of Regu­
lation No 40/94 on the Community 
trade mark. 
(see paras 40, 45-46, 52) 
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