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. In assessing similarity between the goods or services in question, for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, all the relevant factors relating to those goods or services should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned.

2. In that regard, goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking.

Goods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image of the consumer concerned. The perception of the connections between them must therefore be assessed by taking account of any attempt at coordinating presentation of that external image, that is to say coordination of its various components at the design stage or when they are purchased. That coordination may exist in particular between clothing, footwear and headgear in Class 25 of the Nice Agreement and the various clothing accessories which complement them such as handbags in Class 18 of that agreement. Any such coordination depends on the consumer concerned, the type of activity for which that external image is put together (work, sport or leisure in particular), or the marketing strategies of the businesses in the sector. Furthermore, the fact that the goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods.

It follows that some consumers may perceive a close connection between clothing, footwear and headgear in Class 25 and certain ‘leather and imitations of leather, and goods made of these materials and not included in other classes’ in Class 18 which are clothing accessories, and that they may therefore be led to believe that the same undertaking is responsible for the production of those goods. Therefore, the said goods in Class 25 show a more than slight degree of similarity with the clothing accessories included in ‘leather and imitations of leather, and goods made of these materials and not included in other classes’ in Class 18.

(see paras 37, 48-51)

3. It is not possible, solely on the basis of a comparison of the goods concerned, to exclude the likelihood of confusion for the relevant public between the figurative sign PiraÑAM diseño original Juan Bolaños, registration of which as a Community trade mark is sought for ‘Clothing, footwear, headgear’ in Class 25 of the Nice Agreement and the word marks PIRANHA, previously registered in Spain for ‘Leather and imitations of leather, and goods made of these materials and not included in other classes’ in Class 18 of that agreement, since the goods designated by the mark applied for in Class 25 show a more than slight degree of similarity with the clothing accessories included in ‘leather and imitations of leather, and goods made of these materials and not included in other classes’ in Class 18. It is therefore erroneous to hold that there is no likelihood of confusion without having first carried out a preliminary examination as to any similarity between the signs.

(see paras 40, 47, 51-52)