Judgment — ECLI:EU:T:2004:190
Date: 2004-06-22
Language of the case: English
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Figurative marks applied for;General;Examination of the facts by the Office of its own motion
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Netherlands

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the holder of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Figurative mark including the word ‘Galáxia’ and word marks ‘GALA’ (Council Regulation No 40/94, Art. 8(1)(b)) 2. Community trade mark – Procedural provisions – Examination of the facts by OHIM of its own motion – Opposition proceedings – Examination restricted to the submissions of the parties – Obligation on the parties to state facts and evidence in support (Council Regulation No 40/94, Art. 74(1)) 3. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the holder of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Likelihood of association – Concept serving solely to define the scope of the likelihood of confusion (Council Regulation No 40/94, Art. 8(1)(b)) 1. There is no likelihood of confusion for average consumers between the figurative sign including the word ‘Galáxia’, for which registration as a Community trade mark is sought for ‘coffee’ in Class 30 of the Nice Agreement, and the GALA national or international word marks previously registered or in effect in Greece, the United Kingdom, Benelux, France, Italy, Austria and Portugal for ‘coffee and tea’ or ‘tea’ in the same class. Although the goods referred to in the trade mark application and the goods covered by the earlier marks are identical or similar, the conflicting marks are not visually, aurally or conceptually similar, so that the likelihood of confusion referred to in Article 8(1)(b) of Regulation No 40/94 can be excluded. (see paras 22, 28, 37) 2. Pursuant to the last part of Article 74(1) of Regulation No 40/94 on the Community trade mark, in proceedings relating to relative grounds for refusal of registration, the examination to be carried out by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. It follows from that provision that it is also for the parties to state the facts and evidence in support of the relief sought. If the party bringing the opposition proceedings intends to rely on the fact that its mark is well known, it is required to put forward facts and, if necessary, evidence to enable the Office to determine the truth of such a claim. Accordingly, if in a given case the applicant wishes the possible well‑known character of its earlier mark to be taken into account, it cannot merely claim the existence of such a reputation. (see para. 32) 3. Article 8(1)(b) of Regulation No 40/94 on the Community trade mark concerning the relative ground for refusal deriving from the likelihood of confusion between two marks is designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, ‘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’. It follows from that wording that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope. The terms of the provision itself thus exclude its application where there is no likelihood of confusion on the part of the public. Consequently, likelihood of confusion within the meaning of that provision exists only if it is shown that consumers might believe that the products sold under the opposing marks come from the same undertaking or from economically-linked undertakings. (see para. 36)