Judgment — ECLI:EU:T:2003:107
Date: 2003-04-09
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Signs of which a trade mark may consist;Likelihood of confusion with an earlier mark;Opposition proceedings
Procedure: Action for annulment - unfounded
Origin: Germany

Summary of the Judgment 
1. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusing registration — Opposition by the bolder of 
an earlier identical or similar mark registered for identical or similar goods or 
II - 1589 
SUMMARY — CASE T-224/01 
services — Risk of confusion with the earlier mark — Word marks TUFFTRIDE and 
NU-TRIDE 
(Council Regulation No 40/94, Art. 8(1)(b)) 
2. Community trade mark — Observations of third parties and opposition — Examin­
ation of the opposition — Scope — Relative grounds for refusing registration, not 
including absolute grounds put forward in third parties' observations 
(Council Regulation No 40/94, Arts 7, 8, 41, 42 and 43; Commission Regulation 
No 2868/95, Art. 1, Rule 20(6)) 
3. Community trade mark — Definition and acquisition of the Community trade 
mark — Absolute grounds for refusing registration — Trade marks contrary to 
public policy or accepted principles of morality — Scope — Applicant acting in bad 
faith — Not covered 
(Council Regulation No 40/94, Art. 7(1) (f)) 
1. For the relevant public, composed of a 
limited number of highly specialised 
operators in Germany in the treatment 
of metals through chemical processes, 
there is no risk of confusion between 
the word mark 'NU-TRIDE', for which 
registration as a Community mark is 
sought in respect of 'chemicals, none 
consisting of or containing cyanide, all 
for use in the treatment of metals' and 
'metal treatment, not including the use 
or application of cyanide', coming 
within Classes 1 and 40 of the Nice 
Agreement, and the mark 'TUFF­
TRIDE', registered earlier in Germany 
for products within Classes 1, 7 and 11 
of the Nice Agreement and correspond­
ing to the following description: 'Inor­
ganic salts, particularly alkali cyanide 
and alkali cyanate for metal treatment, 
salt bath furnaces together with acces­
sories, namely pyrometers for the 
measurement of the temperature of 
the nitriding bath, exhaust hoods and 
fans for the elimination of exhaust 
gases, air intakes and compressors for 
the ventilation of the baths, equipments 
to remove the sediments deposited in 
the baths, all of these devices intended 
for the nitriding treatment of steel and 
steel parts'. 
Although the goods and services 
covered by the mark for which regis­
tration is sought are similar to the 
goods covered by the earlier mark, the 
degree of similarity between the marks 
in question is not sufficiently high for a 
finding that there is a likelihood of 
confusion between them. That con­
clusion is corroborated by the fact that 
the relevant public is likely to take 
great care in the selection of those 
goods and services. 
(see paras 37, 40, 52) 
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DURFERRIT v OHIM — KOLENf (NU-TRIDE) 
2. It follows from the wording of 
Article 42(1), and from the structure 
of Article 42 and 43 of Regulation 
No 40/94 on the Community trade 
mark, that the absolute grounds for 
refusal contained in Article 7 of that 
regulation do not fall to be examined 
as part of the opposition procedure. 
The grounds on which an opposition 
may be based, as laid down in 
Article 42(1) of Regulation No 40/94, 
are merely the relative grounds for 
refusal in Article 8 of that regulation. 
Those are the terms on which OHIM is 
required to give a decision on the 
opposition under Article 43(5) of that 
regulation. 
Whilst it is true tha t , under 
Article 41(1) of Regulation No 40/94, 
third parties may submit observations 
to OHIM concerning, inter alia, abso­
lute grounds of refusal, it is not in the 
context of opposition proceedings that 
OHIM has to take account of those 
observations, even if observations by 
third parties are submitted in the 
course of an opposition procedure. 
Faced with such a situation, OHIM 
may suspend the opposition proceeding 
pursuant to Rule 20(6) of Regulation 
No 2868/95 implementing Regulation 
No 40/94 on the Community trade 
mark. 
(see paras 72-73) 
3. The requirement of Article 7( 1 )(f) of 
Regulation No 40/94 on the Commu­
nity trade mark, namely that the trade 
mark must be contrary to public policy 
and to accepted principles of morality, 
does not cover the situation in which 
the trade mark applicant acts in bad 
faith. An overall reading of the various 
subparagraphs of Article 7( 1 ) of Regu­
lation No 40/94 shows that they refer 
to the intrinsic qualities of the mark 
claimed and not to circumstances relat­
ing to the conduct of the person 
applying for the trade mark. 
(see para. 76) 
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