Case T-169/03

Sergio Rossi SpA

v

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

(Community trade mark – Opposition proceedings – National and international word marks MISS ROSSI – Application for a Community word mark SISSI ROSSI – Similarity of the goods – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94)

Judgment of the Court of First Instance (Second Chamber), 1 March 2005

Summary of the Judgment

1. Community trade mark – Appeals procedure – Appeals before the Community judicature – Originating application – Intervener’s response – Formal requirements – Brief summary of the pleas in law on which the application is based – Pleas in law not set out in the application – General reference to other documents – Inadmissibility

(Statute of the Court of Justice, Art. 21; Rules of Procedure of the Court of First Instance, Arts 44(1)(c), 46 and 135(1), second para.,)

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 – Need to establish similarity of designated goods or services even where signs identical

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

3. 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 – Word marks SISSI ROSSI and MISS ROSSI

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

1. Under Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of the Court of First Instance, the application must contain a summary of the pleas relied on. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. Whilst the text of the application may be supported by references to specific passages in documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the absence of essential arguments in the application. It is not for the Court to take on the role of the parties by seeking to identify the relevant pleas and arguments in the annexes. That case-law can also be applied to the reply of the other party to the opposition proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), where it intervenes before the Court under Article 46 of the Rules of Procedure, which is applicable in the field of intellectual property pursuant to the second subparagraph of Article 135(1) of those rules.

It follows that, in so far as they refer to the written pleadings submitted by the applicant and by the intervener before OHIM, an application and a reply are inadmissible in so far as the general reference made in them cannot be linked to the pleas and arguments put forward in the application or the reply respectively.

(see paras 30-31)

2. Article 8(1)(b) of Regulation No 40/94 on the Community trade mark states that in order for there to be a likelihood of confusion within the meaning of that provision, the goods or services covered must be identical or similar. Thus, even where the mark applied for is identical to a mark which is distinctive to a particularly high level, it must be established that the goods or services designated by the opposing marks are similar.

(see para. 53)

3. There is not, for average French and Italian female consumers, a likelihood of confusion between the word mark SISSI ROSSI, for which registration as a Community trade mark was sought for ‘ladies’ bags’ falling within Class 18 of the Nice Agreement and the word marks MISS ROSSI, registered earlier in Italy and, as an international mark with effect in France for ‘ladies’ shoes’ falling within Class 25 of that agreement.

Whilst it is true that the differences between the goods, due in particular to the lack of competition between them, are not so great as to rule out, by themselves, the possibility of a likelihood of confusion, the similarities between the signs, which are slight, or moderate at most, are not sufficient to outweigh the differences between the goods, so that consumers will not confuse the marks in question.

(see paras 57, 68, 76, 79-80)