Case T‑10/09 RENV

Formula One Licensing BV

v

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

‛Community trade mark — Opposition proceedings — Application for the Community figurative mark F1-LIVE — Earlier Community figurative mark F1 and national and international word marks F1 Formula 1 — Relative grounds for refusal — Article 8(1)(b) and (5) of Regulation (EC) No 40/94 (now Article 8(1)(b) and (5) of Regulation (EC) No 207/2009)’

Summary — Judgment of the General Court (Eighth Chamber), 11 December 2014

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 — Weak distinctive character of the earlier mark — Effect

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 — Coexistence of earlier marks — Recognition of a certain degree of distinctiveness of a national mark

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 — Figurative mark F1-LIVE — Figurative mark F1 Formula 1 and word marks F1

For average consumers in the European Union, there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, between, on the one hand, the figurative sign F1-LIVE, registration of which as a Community trade mark is applied for in respect of goods and services in Classes 16, 38 and 41 of the Nice Arrangement, and, on the other, the word marks F1 previously registered in Germany for services within Class 41, in the United Kingdom for goods and services in Classes 16 and 38 and, as an international trade mark having effects in Denmark, Germany, Spain, France, Italy and Hungary, for goods and services in Classes 16, 38 and 41, and the figurative Community trade mark F1 Formula 1 previously registered for goods and services in the same classes. Although there are elements that distinguish the marks at issue, one from the other, visually, phonetically and conceptually, there is also a certain degree of overall similarity between those marks as a result of the inclusion of the word element of the earlier mark in the figurative mark for which registration is sought. It follows in particular from the fact that the relevant public keeps in mind only an imperfect picture of the marks at issue, which means that the common element (the ‘f1’ element) creates a certain similarity between the marks concerned, and from the interdependence of the various factors to be taken into consideration, the goods concerned being identical or very similar — that the likelihood of confusion in the minds of consumers cannot be ruled out. In other words, the two marks are likely to be linked in the minds of consumers, who, because the F1 mark is reproduced identically, will interpret the mark applied for as a variant of that earlier mark and, accordingly, as having the same commercial origin. (see paras 29, 30, 45, 52)

If Article 8(1)(b) of Regulation No 40/94 is not to be infringed, it is necessary to acknowledge that an earlier national mark on which an opposition against the registration of a Community trade mark is based has a certain degree of distinctiveness. Accordingly, it cannot be found that the common element of the marks is generic, descriptive or devoid of any distinctive character without calling into question, in proceedings concerning the registration of a Community trade mark, the validity of the earlier trade mark, which would give rise to an infringement of Article 8(1)(b) of Regulation No 40/94. It is true that, where an opposition based on the existence of an earlier national trade mark is filed against the registration of a Community trade mark, OHIM — and, consequently, the General Court — must verify the way in which the relevant public perceives the sign, identical to that national trade mark, in the mark applied for and evaluate, if necessary, the degree of distinctiveness of that sign. However, such verifications may not culminate in a finding that a sign identical to a registered and protected national trade mark lacks distinctive character, since such a finding would not be compatible with the coexistence of Community trade marks and national trade marks or with Article 8(1)(b) of Regulation No 40/94, read in conjunction with Article 8(2)(a)(ii) thereof. Such a finding would be detrimental to national trade marks identical to the sign considered to be devoid of distinctive character, as the registration of such a sign as a Community trade mark would bring about a situation likely to eliminate the national protection of those marks. Accordingly, such a finding would not be in keeping with the system established by Regulation No 40/94, which is based on the coexistence of Community trade marks and national trade marks, as stated in recital 5 in the preamble to that regulation, given that the validity of an international or national trade mark cannot be called into question for lack of distinctive character except in cancellation proceedings brought in the Member State concerned under Article 3(1)(b) of First Council Directive 89/104 and Directive 2008/95 to approximate the laws of the Member States relating to trade marks. (see paras 33-37)