Case C-3/03 P

Matratzen Concord GmbH, formerly Matratzen Concord AG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Similarity between two trade marks – Likelihood of confusion – Application for a figurative Community trade mark containing the word ‘Matratzen’ – Earlier word mark MATRATZEN)

Summary of the Order

1. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an identical or similar earlier trade mark registered for identical or similar goods or services – Similarity between the marks in question – Assessment criteria – Complex mark

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

2. Appeals – Pleas in law – Review by the Court of Justice of the assessment of the facts put before the Court of First Instance – Exclusion – Word and figurative mark applied for as a Community trade mark

(Art. 225 EC; EC Statute of the Court of Justice, Art. 51)

3. Community trade mark – Right of the proprietor of a mark to oppose any use likely to impair the guarantee of origin – Right as part of the specific subject-matter of the trade-mark rights – Opposition to registration of a Community trade mark by the proprietor of a national mark regarded as being descriptive in the language of another Member State – Permissible with regard to the principle of the free movement of goods

(Art. 30 EC; Council Regulation No 40/94)

1. In the context of the application of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole. That does not mean that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components.

(see para. 32)

2. The appraisal of the facts by the Court of First Instance, which led it to hold that in the case of a word and figurative mark for which registration as a Community trade mark is sought the verbal element constitutes the dominant element of the mark at issue, does not constitute a point of law which is subject, as such, to review by the Court of Justice on appeal.

(see para. 34)

3. The right attributed to a trade-mark proprietor of preventing any use of the trade mark which is likely to impair the guarantee of origin, which constitutes the essential function of the trade mark, is part of the specific subject-matter of the trade-mark rights, the protection of which may justify derogations from the principle of the free movement of goods.

Consequently, the principle of the free movement of goods does not prohibit either a Member State from registering, as a national trade mark, a sign which, in the language of another Member State, is descriptive of the goods or services concerned, or the proprietor of such a trade mark from opposing, where there is a likelihood of confusion between that national trade mark and a Community trade mark applied for, registration of the latter.

(see paras 41-42)