Judgment — ECLI:EU:T:2005:254
Date: 2005-06-28
Language of the case: English
Court formation: First Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Figurative marks applied for;Actions before the Community Courts
Procedure: Action for annulment - unfounded
Origin: Ireland

Summary of the Judgment 1. Community trade mark – Appeals procedure – Actions before the Community judicature – Persons entitled to appeal and to be parties to the proceedings – Subrogation of the transferee of the earlier mark to the rights of the opposing party (Council Regulation No 40/94, Art. 63(4)) 2. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor 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 words ‘canal’, ‘jean’, ‘co’ and ‘New York’ and word mark CANALI (Council Regulation No 40/94, Art. 8(1)(b)) 1. Article 63(4) of Regulation No 40/94 on the Community trade mark provides that an action against a decision of a Board of Appeal is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’. As regards opposition proceedings, the new owners of an earlier trade mark may, in that context, bring an action before the Court and should be accepted as a party to the proceedings once they have proven ownership of the right invoked before the Office for Harmonisation in the Internal Market (Trade Marks and Designs). Since the new holder of the earlier trade mark has submitted proof of transfer of the mark, for his part, and the Office has recorded that transfer following the proceedings before the Board of Appeal, he therefore becomes the party to the proceedings before the Office. (see paras 18-20) 2. There is no likelihood of confusion in the minds of average consumers in Italy between the figurative sign comprising, besides a chequered pattern, the word elements ‘canal’, ‘jean’, ‘co’ and ‘New York’, in respect of which registration as a Community trade mark is sought for ‘Clothing, footwear, headgear’ falling within Class 25 of the Nice Agreement, and the word mark CANALI, registered previously in Italy for goods and services in Classes 3, 6, 9, 14, 16, 18, 20, 25, 34 and 42, where, even though the goods covered by the mark applied for are identical to the goods designated by the earlier trade mark, the absence of visual, aural and conceptual similarity between the relevant signs is sufficient to preclude that likelihood in the minds of the relevant public, so that Article 8(1)(b) of Regulation No 40/94 does not apply. (see paras 45, 51, 56, 60, 63-65)