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 – Similarity of the marks concerned – Criteria for assessment – Specific graphic features of the verbal elements of a complex sign – Influence on the sound representation of the sign

(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 – Likelihood of confusion with the earlier mark – Word mark PC WORKS and figurative mark W WORK PRO

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

Summary

1. In the context of the assessment of the visual, phonetic and conceptual similarities between two opposing marks, which seeks to establish or to exclude the existence of a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the overall impression created among the targeted public by each of the two signs must be taken into account.

More particularly, where complex marks are compared on a phonetic level, although in the strict sense the phonetic reproduction of a complex sign corresponds to that of all its verbal elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level, the visual impression created by the specific graphic features of the verbal elements of such a sign is liable to influence the sound representation of the sign, so that it is compatible with a proper assessment of the degree of phonetic similarity to carry out an analysis combining both visual and phonetic criteria.

In the case of a complex word and figurative mark, the verbal elements are also figurative elements which, depending on their specific graphic features, are capable of producing a more or less marked visual impact. Thus, where such a sign consists of several verbal elements, it is quite conceivable that some of them may, because of their size, colour or position, for example, attract the consumer’s attention more, so that he or she, needing to refer orally to the sign, will be prompted to pronounce only those elements and to disregard the others.

(see paras 41-44)

2. There exists, for the average Spanish consumer, a likelihood of confusion between the word mark PC WORKS, registration of which as a Community trade mark is sought for ‘apparatus for recording, transmitting and reproducing sound or images, loudspeakers, amplifiers, record players, tape players, compact disc players, tuners, and parts and fittings for all the aforesaid goods’, it being specified that ‘all the aforesaid goods relat[e] to computers and computer hardware’, in Class 9 of the Nice Agreement, and a mark consisting of a mixed word and figurative sign made up of three vertically arranged elements, the first of which consists of a sign reproducing a black disc in which there is a white uppercase ‘w’, the second of which consists of the word ‘work’ written in black uppercase letters, and the third of which consists of a black rectangle in which there are three small white uppercase letters, spaced apart, forming the word ‘pro’, previously registered in Spain in respect of ‘electronic audio equipment; loudspeakers; sound reproducing apparatus; radio, television and video apparatus’, also in Class 9, in so far as, first, the signs in question essentially relate to the same sort of goods, namely electric apparatus the purpose of which is to reproduce sound and images, and, second, the trade mark applied for and the earlier mark are similar on the visual, phonetic and conceptual levels, so that there is a real risk that the relevant public may form a mistaken impression as to the commercial origin of the goods concerned.

(see paras 29, 51, 53)