Keywords

Summary



Keywords

1. Community trade mark – Appeals procedure – Appeals before the Community judicature – Implementation of a judgment annulling a decision of one of the Boards of Appeal

(Council Regulation No 40/94, Art. 63(6))

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

(Council Regulation No 40/94, Art. 8(1)(b))

3. Community trade mark – Appeals procedure – Appeals before the Community judicature – Implementation of a judgment annulling a decision of one of the Boards of Appeal

(Council Regulation No 40/94, Art. 63(6))

4. Community trade mark – Procedural provisions – Opposition proceedings

(Council Regulation No 40/94, Art. 74(2))

5. Community trade mark – Appeals procedure – Appeals before the Community judicature – Jurisdiction of the Community judicature

(Council Regulation No 40/94, Art. 63(6))

6. Procedure – Interpretation of a judgment

(Statute of the Court of Justice, Art. 43)

7. 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

(Council Regulation No 40/94, Art. 8(1)(b))

8. 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 – Similarity of the marks concerned

9. Community trade mark – Decisions of the Office – Legality – Practice of the Office in previous decisions

(Council Regulation No 40/94, Art. 131(4))

Summary

1. In order to comply with its obligation under Article 63(6) of Regulation No 40/94 on the Community trade mark to take the measures necessary to comply with a judgment of the Community judicature annulling a decision of one of its Boards of Appeal, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) has to ensure that the appeal leads to a new decision of one of its Boards of Appeal. In that regard, it may reallocate the case to another Board of Appeal.

(see para. 23)

2. Although, under the principle of the interdependence between the factors taken into account in a global assessment of the likelihood of confusion, and in particular between the similarity of the trade marks and that of the goods or services covered, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa, for the purposes of applying Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered. Those conditions are cumulative.

Thus, having found there to be no similarity between the mark applied for and the earlier mark, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is not bound to take into consideration the supposed well-known character of the earlier mark, since it is properly entitled to conclude that there was no likelihood of confusion, whatever the supposed especially distinctive character of the earlier mark.

(see paras 28, 44)

3. Following the annulment by a Community Court of a decision of one of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) rejecting an opposition to registration of a Community trade mark, the Board of Appeal to which the case is reallocated must carry out a fresh examination of the appeal. In so far as the judgment annulling the decision has not taken a position on whether or not the marks at issue are similar, the Board of Appeal must re-examine that question, on which it may reach its own conclusion, independently of the position adopted in the earlier annulled decision.

(see paras 38-39)

4. The relevance of the facts and evidence submitted to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) by the parties to opposition proceedings outside the time-limits prescribed for that purpose constitutes one of the criteria which the Office must take into account in order to decide, when exercising its discretion under Article 74(2) of Regulation No 40/94 on the Community trade mark, whether or not to take account of such facts and evidence.

(see para. 42)

5. The Community judicature carries out a review of the legality of the decisions of the adjudicating bodies of the Office for Harmonisation in the Internal Market (Trade Marks and Designs). If it holds that such a decision, called into question in an action before it, is vitiated by illegality, it must annul the decision. It may not dismiss the action while substituting its own reasoning for that of the competent body of the Office, which is the author of the contested act. Therefore, if a Community Court finds that the reasoning of a decision of one of the Boards of Appeal of the Office is vitiated by an error of law, it is not entitled itself to reject the opposition for a reason which was not stated in the decision challenged before it.

(see paras 47, 49)

6. Under Article 43 of the Statute of the Court, if the meaning or scope of a judgment is in doubt, it is for the Community Court which gave judgment to construe it. Accordingly, there is no presumption that where a judgment annulling a decision of one of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) can be interpreted in a number of ways, the version most favourable to the applicant should be preferred. The Board of Appeal to which the case is referred following such an annulment is not bound to hear the applicant concerning the interpretation of the judgment annulling the decision. If the applicant or the Office, both parties to the proceedings before the Community judicature which resulted in that annulment, believe there to be a doubt as to the interpretation of the judgment annulling the decision, it is for them to bring the matter before the competent Community Court.

(see paras 62-63)

7. For producers of food and confectionery products, there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the word sign ARCOL, for which registration as a Community trade mark is sought for ‘chemical substances for preserving foodstuffs’ within Class 1 of the Nice Agreement as well as for goods within Classes 17 and 20 of that Agreement, and the word mark CAPOL, registered previously as a Community trade mark for ‘chemical preparations for keeping fresh and preserving foodstuffs, namely, raw materials for smoothing and preserving prepared food products, in particular confectionery’ within Class 1 of the Nice Agreement, given that the marks at issue are not in any way identical or similar and that, therefore, that provision is not applicable, even though the goods covered by the marks are identical.

(see paras 76, 92)

8. The fact that two word marks have the same number of letters is not, as such, of any particular significance for the public targeted by those marks, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar.

In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters.

What matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order.

(see paras 81-83)

9. Decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are called on to take under Regulation No 40/94 on the Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community Courts, and not on the basis of a previous practice of the Office. Those considerations are all the more valid as regards a declaration supposedly made by the Office representative before the Community Courts, particularly because, in the light of the independence of the President and members of the Boards of Appeal of the Office, laid down in Article 131(4) of Regulation No 40/94, they are not bound by the position adopted by the Office in a dispute before the Community Courts.

(see paras 98-99)