Joined Cases T-183/02 and T-184/02

El Corte Inglés, SA

v

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

(Community trade mark – Opposition proceedings – Earlier word marks MUNDICOLOR – Application for Community word mark MUNDICOR – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)

Judgment of the Court of First Instance (Fourth Chamber), 17 March 2004

Summary of the Judgment

1. Community trade mark – Observations by third parties and opposition – Examination of opposition – Proof of use of the earlier mark – Presumed that the mark used where the applicant has not lodged a request for proof of such use both expressly and within the time-limits

(Council Regulation No 40/94, Art. 43(2) and (3))

2. Community trade mark – Definition and acquisition of Community trade mark – Relative grounds for refusal – Opposition by the holder of an identical or similar earlier mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Similarity between the marks concerned – Ability of semantic differences to counteract visual and aural similarities – Conditions

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

3. Community trade mark – Definition and acquisition of Community trade mark – Relative grounds for refusal – Opposition by the holder of an identical or similar earlier mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Word mark ‘MUNDICOR’ and word marks ‘MUNDICOLOR’

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

1. Pursuant to Article 43(2) and (3) of Regulation No 40/94 on the Community trade mark, for the purposes of examining an opposition introduced under Article 42 of that regulation, the earlier mark is presumed to have been put to genuine use as long as the applicant does not request proof of that use. The presentation of such a request therefore has the effect of shifting the burden of proof to the opponent to demonstrate genuine use (or the existence of proper reasons for non-use) upon pain of having his opposition dismissed, that proof having to be provided within the time allotted by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) in accordance with Rule 22 of Regulation No 2868/95 implementing Regulation No 40/94. For that to occur, the request must be made to the Office expressly and within the time-limits.

It follows that the lack of proof of genuine use can be penalised by rejecting the opposition only where the applicant has requested such proof before the Office expressly and in time.

(see paras 38-39)

2. When assessing a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, conceptual differences which distinguish the opposing marks may be such as to counteract to a large extent the visual and aural similarities between those marks. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning.

(see para. 93)

3. There is, for the average Spanish consumer, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (on the Community trade mark) between the word mark ‘MUNDICOR’, whose registration as a Community trade mark is sought in respect of almost all goods and services within the 42 classes of the Nice Classification, and the word marks ‘MUNDICOLOR’, previously registered in Spain firstly for ‘paints, varnishes, etc.’ within Class 2 and secondly for ‘transport services ... for holidaymakers’ within Class 39 and ‘hotel accommodation’ within Class 42 of that classification, since there is a very high degree of similarity (identity or quasi-identity) between the goods and services covered by the opposing marks and since these marks are similar within the meaning of the abovementioned provision, it being specified as regards this latter point that it cannot be asserted that there is a conceptual difference between the opposing marks which neutralises the pronounced visual and aural similarity.

(see paras 76, 99-100, 106)