Case T-356/02

Vitakraft-Werke Wührmann & Sohn GmbH & Co. KG

v

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

(Community trade mark – Opposition proceedings – Earlier figurative mark including the verbal element ‘Krafft’ – Application for Community word mark VITAKRAFT – Relative ground for refusal – Genuine use of the earlier mark – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 – Rule 22(2) of Regulation (EC) No 2868/95)

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

Summary of the Judgment

1. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Criteria for assessment – Requirement of concrete and objective proof – Mere presentation of sales catalogues – Insufficient proof

(Council Regulation No 40/94, Article 43(2))

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 ‘VITAKRAFT’ and figurative marks including the word ‘Krafft’

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

1. There is genuine use of a mark within the meaning of Article 43(2) of Regulation No 40/94 on the Community trade mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly.

Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.

The latter requirement is not satisfied by the mere presentation by the opponent of catalogues that represent the opponent’s products, that show the opponent’s trade mark used in the same form as registered and that show how the mark is applied on the products, since the catalogues submitted establish neither the fact that they were distributed to a potential clientele, nor the extent of any distribution, nor the number of sales made of goods protected by the mark.

(see paras 26, 28, 31, 34)

2. There is, for Spanish-speaking consumers, a likelihood of confusion between the word sign ‘VITAKRAFT’, registration of which as a Community trade mark is sought for certain goods in Classes 1, 3 and 4 of the Nice Agreement, and the figurative marks including the element ‘Krafft’ and blue and red rectangles, registered earlier in Spain to designate similar products in Classes 1 and 3 of the Arrangement, to the extent that, firstly, both from the visual and auditory points of view, the preponderant element of the sign requested, ‘kraft’, and the verbal element of the earlier marks, ‘Krafft’, are very similar, if not identical, the two ‘f’s in the word ‘Krafft’ making no perceptible phonetic difference or sufficient visual difference to dissipate the elements of similarity set out above and, secondly, given that neither the mark requested nor the earlier marks have any concrete meaning in the Spanish language, no sufficient conceptual difference between the signs is apparent.

(see paras 55-57)