Case T-185/03

Vincenzo Fusco

v

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

(Community trade mark – Opposition proceedings – Application for Community word mark ENZO FUSCO – Earlier Community word mark ANTONIO FUSCO – Likelihood of confusion – Similarity between 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 – 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 – Earlier trade mark constituted by a Community trade mark – Refusal to register due to a relative ground for refusal even limited to one part of the Community

(Council Regulation No 40/94, Arts 1(2), 7(2) and 8(1)(b))

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 – Applicant having a national trade mark identical to that applied for and earlier than the opposing Community trade mark – Not revelant

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

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 ENZO FUSCO and ANTONIO FUSCO

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

1. When, during opposition to registration of a Community trade mark under Articles 42 et seq. of Regulation No 40/94, the earlier trade mark is a Community trade mark, the territory in which the earlier mark is protected is that of the European Community. However, it follows from the unitary character of the Community trade mark, laid down in Article 1(2) of Regulation No 40/94, that an earlier Community trade mark is protected in the same way in all Member States. Earlier Community trade marks may therefore be pleaded in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in relation to the perception of the consumers of part of the Community. It follows that the principle laid down in Article 7(2) of Regulation No 40/94, that it suffices, in refusing to register a trade mark, that an absolute ground for refusal exists only in part of the Community, also applies by analogy to a relative ground for refusal under Article 8(1)(b) of Regulation No 40/94.

(see para. 33)





2. In the context of opposition proceedings against the registration of a Community trade mark under Articles 42 et seq. of Regulation No 40/94, the possession by the applicant of a national trade mark which predates the opposing Community trade mark and the same as the Community trade mark sought is irrelevant as long as the opposing Community trade mark is in fact protected. In such a case, it is for the proprietor of the national trade mark, if he considers that he is so entitled and if he so wishes, to seek its protection by means of opposition or annulment proceedings or, where appropriate, before the competent national court in the context allowed by Article 106 of Regulation No 40/94, as the case may be.

(see paras 62-63)





3. There is, for the average, non-specialist Italian consumer, a risk of confusion between the word sign ENZO FUSCO, for which registration as a Community trade mark is sought for goods falling within Classes 3, 9, 18, 24 and 25 under the Nice Agreement and the word mark ANTONIO FUSCO, registered earlier as a Community trade mark for identical goods, inasmuch as, firstly, that consumer, since the Italian consumer generally attributes greater distinctiveness to the surname than the forename, will keep in mind the name ‘Fusco’ rather than the forenames ‘Antonio’ or ‘Enzo’, and as, secondly, the goods covered by the marks in question are the same. In those circumstances, a consumer faced with goods bearing the trade mark applied might confuse it with the earlier trade mark.

(see paras 38, 67)