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 – Similarity of the marks concerned – Possibility of a similarity between a figurative mark and a word mark

(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 – Similarity of the marks concerned – Criteria for assessment – Complex mark

(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 – Word mark STAR TV and figurative mark including the words ‘star TV’

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

Summary

1. In the context of the examination of an opposition brought by the proprietor of the earlier mark, under Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression.

(see para. 43)

2. In the context of the examination of an opposition brought by the proprietor of the earlier mark, under Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, a complex word and figurative mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it.

(see para. 44)

3. A likelihood of confusion exists for the average German, Austrian, Benelux, French and Italian consumer between the word mark STAR TV whose registration as a Community trade mark is sought for ‘Television broadcasting services, interactive electronic television broadcasting services, including via the medium of television, electronic mail, the internet and other electronic media’ and ‘production, distribution, recording and development of television programmes, video, tapes, CDs, CD-ROMs and computer disks’ in Classes 38 and 41 of the Nice Agreement, and the mark comprises a figurative and word mark consisting of a central depiction of a five-pointed star tilting to the left, over which the words ‘star TV’ are written on two lines in red capital letters, rounded off by a moon surrounded by three small stars, the outlines of which appear at the top left between two of the points of the central star registered earlier as an international mark applicable in Germany, Austria, the Benelux countries, France and Italy for services of ‘television broadcasting, i.e. broadcasting of special programmes containing information and documentaries on cinema and movies’ and ‘production of television programmes, namely of special programmes containing information and documentaries on cinema and movies’ in the same classes, in as much as, first, despite the differences in description, the services to which the trade mark application relates are in part identical to the services covered by the earlier trade mark and in part similar and, secondly, visually, phonetically and conceptually the trade mark applied for and the earlier mark are very similar and, in some respects, identical, so that it must be concluded that there is a real likelihood that the relevant public will be unable to tell the commercial origin of those services apart.

Such a conclusion is equally valid for the services covered by the trade mark application which relate to the distribution of television programmes and in respect of which the target public consists of professionals in the audiovisual sector, since the visual, phonetic and conceptual similarities between the conflicting marks are such that even a more attentive public may be led to believe that the services in question come from the same undertaking or from economically linked undertakings.

(see paras 40, 53-56)