When the opposition to a Community trade mark application is based on several earlier marks and those marks have characteristics which enable them to be regarded as forming part of a single series or family, which may be the case, inter alia, when they reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of assessing whether there is a likelihood of confusion.

In such circumstances, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion. In such a case, the likelihood that the consumer will mistake the commercial origin of the goods or services in question does not result from the possibility of his confusing the trade mark applied for with one of the earlier marks in a series, but from the possibility of his considering that the trade mark applied for forms part of the same series.

Furthermore, the presence of a series or family of trade marks is relevant to the assessment of the existence of a likelihood of confusion, arising from a risk that the mark applied for will be associated with the series, only if the common element of the marks at issue is distinctive. If, on the other hand, that element is descriptive, it is not apt to create a likelihood of confusion.

The likelihood of association between the marks applied for and a series of earlier marks may be relied on only if two conditions are cumulatively satisfied. First, the proprietor of the series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a series. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.

In order for there to be a likelihood of the public’s being mistaken as to whether the trade mark applied for belongs to a series, the earlier marks forming part of that series must necessarily be present on the market. Since taking into account the serial nature of the earlier marks would entail widening the scope of protection of the trade marks forming part of the series, considered individually, any assessment in the abstract of the likelihood of confusion, based solely on the existence of several registrations covering marks reproducing the same distinctive element, and in the absence of any actual use of the marks, must be regarded as excluded. Indeed, where there is a family or series of trade marks and the likelihood of confusion therefore results from the possibility that the consumer might be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for, considering, erroneously, that that trade mark is part of that family or series, proof of the use of a sufficient number of trade marks capable of constituting a family or series is particularly important, since no consumer can be expected, in the absence of such use, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Consequently, failing proof of the use of a sufficient number of trade marks capable of constituting a family or series, any likelihood of confusion entailed by the appearance on the market of the trade mark applied for will have to be assessed by comparing each of the earlier marks, taken individually, with the trade mark applied for.

Earlier marks may be regarded as forming part of the same series or family, inter alia, where they reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them one from the other or where they are characterised by the repetition of a single prefix or suffix taken from an original mark.

The trade mark applied for might not display characteristics capable of associating it with the series, for example where the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content, or where the common element is not distinctive.

(see paras 43-45, 58, 60, 72, 75)