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

(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

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

Summary

1. Although it is settled case-law that, in the assessment of the similarity of trade marks within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, as a general rule the public will not consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark, the weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them.

None the less, since the comparison between marks must be based on the overall impression given by them having regard, in particular, to the distinctive character of their elements in relation to the goods or services concerned, it does not suffice, in order to find a similarity between marks, that an element essential to the visual impression of a complex mark and the sole element of the other sign are identical or similar. On the other hand, it should be concluded that there is a similarity where, considered as a whole, the impression given by a complex mark is dominated by one of its elements in such a way that the other components of that mark appear negligible in the image of that mark which the relevant public remembers, in the light of the goods or services designated.

(see paras 32-33)

2. There is no likelihood of confusion for the average consumer between the figurative mark consisting of a representation of a cowhide in black and white, in respect of which registration is sought for ‘Milk, milk beverages, milk products, dairy products, cream and yoghurt’ in Class 29 of the Nice Agreement, and the complex mark comprising in part a representation of a cowhide in black and white, and made up of a number of figurative and word elements, including the word element ‘inex’, registered previously in the Benelux countries for ‘Milk and milk products’ in the same class of that agreement.

Since the ‘inex’ word element contributes in a decisive manner to the overall impression given by the earlier mark, its presence does not permit the inference that the cowhide design of the earlier mark is likely to dominate, by itself, the image of that mark which the public keeps in mind. Accordingly, although the cowhide design is essential to the visual and conceptual impression given by the earlier mark, neither the significant visual differences between the signs at issue nor the weak distinctive character of the cowhide design in this case lead to the conclusion that there is a likelihood of confusion between the marks at issue.

(see paras 41, 47)