Joined Cases T-117/03 to T-119/03 and T-171/03

New Look Ltd

v

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

(Community trade mark – Opposition proceedings – Earlier Community figurative mark comprising the letter combination ‘NL’ – Applications for Community figurative marks comprising the terms ‘NLSPORT’, ‘NLJEANS’, ‘NLACTIVE’ and ‘NLCollection’ – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94)

Judgment of the Court of First Instance (Second Chamber), 6 October 2004

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 – Mark applied for constituted by a complex mark – Perception by the public of descriptive elements as distinctive and dominant elements – None – Earlier mark constituted by a Community trade mark – Refusal of registration where there is a relative ground for refusal, even limited to part of the Community

(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 – Public’s level of attentiveness – Statement by applicant for trade mark that there is a particularly high level in a given sector – Burden of proof

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

3. Community trade mark – Definition and acquisition of the Community trade mark – Signs capable of constituting a mark – Signs composed of a letter or letter combination – 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 – Criteria for assessment

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

4. 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 – Weighing of the elements of similarity or difference between the signs – Account to be taken of the inherent qualities of the signs or the conditions under which goods or services are marketed – Clothing sector

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

5. 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 marks ‘NLSPORT’, ‘NLJEANS’, ‘NLACTIVE’, ‘NLCollection’ and figurative mark ‘NL’

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

1. When assessing the similarity of a complex mark with an earlier mark, for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, it should be noted that the public will not generally consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark. Where opposition is based on the existence of a Community mark, it is sufficient in that regard for the purposes of a possible refusal of registration that the descriptive nature of such an element be perceived in a part of the Community’s territory. Although Article 8 of Regulation No 40/94 does not contain a provision similar to Article 7(2) of that regulation, it follows from the principle of the unitary character of the Community trade mark set down in Article 1(2) of that regulation that registration must be refused even if a relative ground for refusal obtains in only part of the Community.

(see para. 34)

2. Whilst it is true, when assessing a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, that the average consumer’s level of attention may vary according to the category of goods or services in question, it is not sufficient for a trade mark applicant simply to assert that in a particular sector the consumer is particularly attentive to trade marks without supporting that claim with facts or evidence.

(see para. 43)

3. It is clear from the wording of Article 4 of Regulation No 40/94 on the Community trade mark that the legislature expressly included signs composed of a letter or letter combination in the list of examples of signs which may constitute a Community trade mark, subject to any absolute or relative grounds for refusal upon which opposition to registration may be based.

In that regard, Articles 7 and 8 of Regulation No 40/94 concerning refusal of registration do not lay down specific rules for signs composed of a letter combination not forming a word. It follows that the global assessment of the likelihood of confusion between such signs pursuant to Article 8(1)(b) of that regulation in principle follows the same rules as that in respect of word signs comprising a word, a name or an invented term.

(see paras 47-48)

4. In the global assessment of the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight, and it is appropriate to examine the objective conditions under which the marks may be present on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed.

As regards the clothing sector, if the goods covered by the mark in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important. If on the other hand the product covered is primarily sold orally, greater weight will usually be attributed to any aural similarity between the signs.

(see para. 49)

5. For the average European Community consumer, there is a likelihood of confusion between, on the one hand, the figurative signs ‘NLSPORT’, ‘NLJEANS’, ‘NLACTIVE’ and ‘NLCollection’, registration of which as Community trade marks is being sought, in relation to the first three signs, in respect of ‘articles of clothing, footwear and headgear for women and girls’ and, in relation to the fourth sign, in respect of ‘articles of clothing, footwear and headgear’, all falling within Class 25 of the Nice Classification, and, on the other hand, the figurative mark ‘NL’, previously registered as a Community trade mark in respect of ‘sweaters; jerseys; waistcoats; jackets; skirts; trousers; shirts; blouses; dressing gowns; underwear; gowns; bathing costumes; raincoats; dresses; stockings; socks; scarves; neckties, headgear and gloves (clothing)’, also falling within Class 25 of the Nice Classification.

Given the identity of the goods and the conditions under which they are marketed, in which the consumer may perceive the marks applied for as special lines originating from the undertaking which is the proprietor of the earlier mark, the degree of phonetic and conceptual similarity between the signs at issue suffices to establish the existence of a likelihood of confusion.

(see paras 40, 51-52)