Keywords

Summary



Keywords

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 – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 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 – Similarity of the marks concerned

(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

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

Summary

1. For the average consumer in Denmark, Spain, Finland, Ireland, the United Kingdom and Sweden there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the figurative sign Torre Albéniz for which registration as a Community trade mark is sought for ‘Wines’ within Class 33 of the Nice Agreement and the figurative mark TORRES, registered earlier in those Member States for identical goods.

When making an overall assessment of the marks at issue, the visual, aural and possible conceptual differences between the signs at issue are sufficient, in spite of the identity of the goods designated and the fact that they belong to the same sector of production and marketing, to preclude the resemblances between the signs at issue from giving rise to a likelihood of confusion in the mind of the average consumer.

The overall impression produced by the mark applied for was very different from that produced by the earlier mark. That being the case, the high distinctiveness of the earlier sign resulting from the public’s knowledge of it on the market cannot, by itself, disturb the conclusion that there is no likelihood of confusion.

Moreover, apart from the word in the plural, ‘torres’, and/or the representation of three towers, the earlier marks do not have, in a particular and unvarying form, any characteristics capable of leading the relevant consumer to associate the mark applied for with all of the earlier marks, conceived as a ‘family’ or ‘series’ of marks, and, therefore, to be mistaken as to the provenance or origin of the goods covered by that mark. In fact, both in its word form and figuratively, the Torre Albéniz sign can be distinguished from the earlier marks by its individuality as described above, and in particular by the distinctive addition of the element ‘albéniz’.

(see paras 45, 74, 76, 83)

2. The global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark 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.

A compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark, unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it.

However, that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole.

(see paras 47-49)

3. There can be said to be a ‘series or a ‘family’ of marks when either those earlier marks reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of the same prefix or suffix taken from an original mark. In such circumstances, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion. When there is a ‘family’ or a ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that that trade mark is part of that family or series of marks.

However, the likelihood of confusion attaching to the existence of a family of earlier marks can be pleaded only if both of two conditions are satisfied. First, the earlier marks forming part of the ‘family’ or ‘series’ must be present on the market. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That might not be the case, for example, where the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content.

(see paras 80-81)