In order to meet the condition relating to the similarity of the marks laid down in Article 8(5) of Regulation No 40/94 on the Community trade mark, which provides protection for an earlier mark enjoying a reputation for dissimilar goods or services, it is not necessary to prove that there exists, on the part of the relevant section of the public, a likelihood of confusion between the earlier mark with a reputation and the mark applied for. It is sufficient for the degree of similarity between those marks to have the effect that the relevant section of the public establishes a link between them. The existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case. In relation to the visual, aural and conceptual similarities, the comparison of the signs must be based on the overall impression produced by the marks, taking account, inter alia, of the distinctive and dominant elements of those marks.

To benefit from the protection of the earlier mark enjoying a reputation for dissimilar goods or services, provided for in Article 8(5) of Regulation No 40/94 on the Community trade mark, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must, however, adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case.

Article 8(5) of Regulation No 40/94 on the Community trade mark, which provides protection for an earlier mark enjoying a reputation for dissimilar goods or services, enables, inter alia, the proprietor of the earlier mark with a reputation to oppose registration of marks likely to take unfair advantage of the distinctive character or repute of the earlier mark. That unfair advantage must be understood as encompassing instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation.

There is a high probability that the use of the figurative mark, CITI — for which an application for registration as a Community trade mark has been made in respect of ‘customs agencies, property valuers, real estate agents, evaluation and administration of house contents’ in Class 36 of the Nice Agreement — by customs agencies and therefore for financial agency activities in the management of money and real estate for clients, may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK, registered earlier as a Community trade mark in respect of ‘financial services’ and ‘real estate services’ in Class 36, and the considerable investments undertaken to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the applicant is associated with or belongs to the proprietors of the earlier mark and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because those proprietors are the holders of several trade marks containing the component ‘citi’.

The reputation of the trade mark CITIBANK in the European Community is associated with features of the banking sector, namely, solvency, probity and financial support to private and commercial clients in their professional and investment activities. Thus, there is a clear relationship — as well as an overlap in the groups of clients of the proprietors of the earlier mark and those of the trade mark applied for — between the services of customs agencies and the financial services offered by banks, in that clients who are involved in international trade and in the import and export of goods also use the financial and banking services which such transactions require. It follows that there is a probability that such clients will be familiar with the proprietors of the earlier mark’s bank given its extensive reputation at international level.

(see paras 81-83)