Keywords

Summary



Keywords

1. Judicial proceedings — Application initiating proceedings — Formal requirements — Summary of the pleas in law on which the application is based — Pleas in law not put forward in the application — General reference to other documents — Inadmissibility

(Statute of the Court of Justice, Art. 21; Rules of Procedure of the General Court, Art. 44(1)(c))

2. Community trade mark — Procedural provisions — Statement of reasons on which decisions are based — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU — Recourse by the Board of Appeal to implicit reasoning — Whether permissible — Conditions

(Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence)

3. Community trade mark — Application for a Community trade mark — Claim of seniority of the national mark — Condition — Identity of the sign and the mark — Restrictive interpretation

(Council Regulation No 207/2009, Art. 34(1) and (2))

4. Community trade mark — Application for a Community trade mark — Claim of seniority of the national mark — Condition — Identity of the sign and the mark — Definition — Scope identical to that of Article 8(1)(a) of Regulation No 207/2009

(Council Regulation No 207/2009, Arts 8(1)(a), and 34(1); Council Directive 89/104, Art. 5(1)(a))

5. Community trade mark — Application for a Community trade mark — Claim of seniority of the national mark — Condition — Identity of the sign and the mark — Figurative marks MEDINET

(Council Regulation No 207/2009, Art. 34(1))

6. Community trade mark — Application for a Community trade mark — Claim of seniority of the national mark — Condition — Identical nature of the sign and the mark — Scope of protection of the marks — No effect

7. Community trade mark — Decisions of OHIM — Principle of equal treatment — Principle of sound administration — Previous decision-making practice of OHIM

Summary

1. See the text of the decision.

(see para. 13)

2. See the text of the decision.

(see paras 14, 15)

3. In order to uphold the claim of seniority of the earlier national mark for the purposes of the application for registration of the Community trade mark under Article 34 of Regulation No 207/2009 on the Community trade mark, three cumulative conditions must be fulfilled: the earlier mark and the Community trade mark applied for must be identical; the goods or services covered by the Community trade mark applied for must be identical to, or contained within, those covered by the earlier mark; and the proprietor of the marks at issue must be the same.

The condition that the sign and mark must be identical must be interpreted restrictively because of the consequences attaching to such identity. In the present case, under Article 34(2) of Regulation No 207/2009, the proprietor of the Community trade mark for which the seniority of the earlier mark has been recognised will, if he surrenders the earlier mark or allows it to lapse, be able to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.

(see paras 26, 28)

4. A sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences which are so insignificant that they may go unnoticed by an average consumer.

That definition of the identity of marks is based on the interpretation of Article 5(1)(a) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks, which is equivalent to Article 8(1)(a) of Regulation No 207/2009 on the Community trade mark. Even although the objectives of Article 8(1)(a) and of Article 34 of that regulation are not the same, it is a condition for the application of both of them that the marks at issue must be identical. A concept which is used in different provisions of a legal measure, must, for reasons of coherence and legal certainty, and particularly if it is to be interpreted strictly, be presumed to mean the same thing, irrespective of the provision in which it appears.

(see paras 27, 39-41)

5. The claim of seniority under Article 34(1) of Regulation No 207/2009 on the Community trade mark of the national and international figurative marks MEDINET for the Community figurative mark MEDINET cannot be upheld, since the marks are not identical.

Although the earlier national and international marks and the Community trade mark applied for include a common word element, namely the element ‘medinet’, contained in a figurative shape representing a cross, the former are golden in colour whereas the latter does not designate any specific colour. The fact that a mark is registered in colour or, on the contrary, does not designate any specific colour cannot be regarded as a negligible element in the eyes of a consumer. The impression left by a mark is different according to whether that mark is in colour or does not designate any specific colour.

(see paras 30, 52, 54)

6. As for the scope of protection of the marks at issue, that is not a factor to be taken into consideration in examining the claim of seniority of the earlier mark under Article 34 of Regulation No 207/2009 on the Community trade mark. One of the conditions examined by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) in order to uphold or refuse such a claim is that of whether the marks at issue are identical. An examination of whether such marks are identical involves a comparison of the elements comprising the marks and not an assessment or comparison of the scope of protection which those marks have or might have, and which may, moreover, vary in the light of the provision of Regulation No 207/2009 applicable.

(see para. 47)

7. See the text of the decision.

(see paras 61, 62)