Keywords

Summary



Keywords

1. Community trade mark – Definition and acquisition of the Community trade mark – Rules laid down by Directive 89/104 on the limited effects of a national trade mark – Account taken during the registration procedure of a trade mark consisting of a patronymic – Not included

(Council Regulation No 40/94; Council Directive 89/104, Art. 6(1)(a))

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 – Trade mark sought composed of one or more patronymics – Assessment of the likelihood of confusion according to the same criteria as those applicable to other categories of trade marks

(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 – Figurative mark containing the words ‘Julián Murúa Entrena’ – Word mark MURÚA

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

Summary

1. Article 6(1)(a) of Directive 89/104 on trade marks, which concerns the limitations of the right conferred by a national trade mark on its proprietor with respect to its use in the course of trade, among other things preventing the proprietor from prohibiting a third party from using his own name or address, provided he uses them in accordance with honest practices in industrial or commercial matters, cannot be taken into account during the procedure for registration of a Community trade mark consisting of one or more personal names because it does not, as the applicant seems to argue, entitle third parties to use their name or their address as a trade mark.

(see paras 45-46)

2. A sign containing the first name and family names of a natural person may not be registered as a Community trade mark where this is precluded by a relative ground for refusal of registration following a notice of opposition lodged by the proprietor of an earlier trade mark.

The criteria for assessing the existence of a likelihood of confusion between such a Community trade mark whose registration has been sought and an earlier trade mark within the meaning of Article 8(1)(b) of Regulation No 40/94 are the same, unless otherwise provided by that regulation, as those applicable to the other categories of trade mark.

(see paras 49-50)

3. There is, on the part of the Spanish public, a likelihood of confusion between the figurative sign comprising, in its upper part, a drawing showing a farmhouse surrounded by trees and vineyards and, in its lower part, a coat of arms surmounted by the words ‘Julián Murúa Entrena’ (perceived to be a first name and family names), registration of which as a Community trade mark is sought for ‘wines’ included in Class 33 of the Nice Agreement, and the word mark MURÚA (perceived as a surname), previously registered in Spain for ‘all types of wine’ included in the same class. First, the goods covered by the conflicting trade marks are identical and, second, the conflicting signs are similar, the dominant element of the verbal sign of the trade mark applied for and the only element of the earlier trade mark being identical, so that the average Spanish consumer, when confronted with a product bearing the trade mark applied for, is liable to regard that product as having the same commercial origin as a product bearing the earlier trade mark.

(see paras 76, 78)