Case T-388/00

Institut für Lernsysteme GmbH

v

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

‛Community trade mark — Opposition procedure — Earlier figurative mark containing the acronym ILS — Application for Community word mark ELS — Proof of use of earlier mark — Article 43(2) and (3) of Regulation (EC) No 40/94 and Rule 22 of Regulation (EC) No 2868/95 — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 — Statement of reasons’

Judgment of the Court of First Instance (Fourth Chamber), 23 October 2002 II-4306

Summary of the Judgment

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 mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Acronyms ELS and ILS

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 mark registered for identical or similar goods or services — Similarity between the goods or services and between the marks in question — Assessment criteria

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 mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment criteria

Community trade mark — Observations from third parties and opposition — Examination of opposition — Proof of use of the earlier mark — Period set by the Office — Peremptory nature — Challenging of evidence by the trade mark applicant — Not relevant

Where an action is brought before the Community judicature contesting a decision of one of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), the Office is required under Article 63(6) of Regulation No 40/94 to take the measures necessary to comply with the judgment of the Court. Accordingly, the Court of First Instance is not entitled to issue directions to the Office. (see para. 19)

Rule 22(1) of Regulation No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark provides that, where the owner of an earlier mark opposing registration of a Community trade mark has to furnish proof of use of the mark, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is to invite him to do so within such period as it specifies. By virtue of that provision, read in conjunction with Article 43(2) of Regulation No 40/94, if evidence establishing use of the mark is not produced within the period specified by the Office the opposition must be rejected. That peremptory nature of the timelimit laid down by the rule in question means that the Office cannot take account of evidence that is submitted late. More particularly, the fact that, in its comments on the evidence of use of the mark submitted by the opponent, the applicant challenges that evidence, cannot have the effect of causing that period to start to run afresh and of allowing the opponent to supplement the evidence of use submitted within the period specified by the Office. (see paras 28-29)

If, in opposition proceedings under Articles 42 and 43 of Regulation No 40/94 on the Community trade mark brought by the owner of an earlier mark, he has to prove use of the mark, and if he has already had to prove such use in earlier proceedings, the opponent may refer to documents already filed in those proceedings where he is called upon to provide evidence of use of that earlier trade mark on a subsequent occasion. (see para. 31)

Paragraphs (1)(b) and (2)(a)(ii) of Article 8 of Regulation No 40/94 on the Community trade mark provide: ‘Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.’‘Earlier trade marks’ means ‘trade marks registered in a Member State... with a date of application for registration which is earlier than the date of application for registration of the Community trade mark’. The likelihood that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion and must be assessed globally, taking into account all factors relevant to the circumstances of the case. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. A lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa. (see paras 44-46)

Where the owner of an earlier mark within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark brings opposition proceedings, in assessing the similarity of the goods or services concerned, all the relevant factors pertaining to the relationship between those goods and services are to be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with one another or are complementary. As regards comparison of the conflicting signs, it must be observed that, according to the case-law of the Court of Justice, the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. It is possible that mere aural similarity between trade marks may create a likelihood of confusion. (see paras 51, 62)