Case C-361/04 P: Appeal brought on 19 August 2004 (Fax: 18 August 2004) by Claude Ruiz-Picasso, Paloma Ruiz-Picasso, Maya Widmaier-Picasso, Marina Ruiz-Picasso and Bernard Ruiz-Picasso against the judgment delivered on 22 June 2004 by the Second Chamber of the Court of First Instance of the European Communities in Case T-185/02 Claude Ruiz-Picasso, Paloma Ruiz-Picasso, Maya Widmaier-Picasso, Marina Ruiz-Picasso and Bernard Ruiz-Picasso v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), supported by DaimlerChrysler AG, which was also a party before the Board of Appeal
Date: 2004-10-23
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), appeal, motor car, spare part, trade-mark law

23.10.2004

EN

Official Journal of the European Union

C 262/21

Appeal brought on 19 August 2004 (Fax: 18 August 2004)
by Claude Ruiz-Picasso, Paloma Ruiz-Picasso, Maya
Widmaier-Picasso, Marina Ruiz-Picasso and Bernard Ruiz-
Picasso against the judgment delivered on 22 June 2004 by
the Second Chamber of the Court of First Instance of the
European Communities in Case T-185/02 Claude Ruiz-
Picasso, Paloma Ruiz-Picasso, Maya Widmaier-Picasso,
Marina Ruiz-Picasso and Bernard Ruiz-Picasso v Office for
Harmonisation in the Internal Market (Trade Marks and
supported by DaimlerChrysler AG,
Designs)

(OHIM),

which was also a party before the Board of Appeal

(Case C-361/04 P)

(2004/C 262/36)

Instance of

the Court of First

An appeal was brought before the Court of Justice of the Euro-
pean Communities on 19 August 2004 (Fax: 18 August 2004)
against the judgment delivered on 22 June 2004 by the Second
Chamber of
the European
Communities in Case T-185/02 Claude Ruiz-Picasso, Paloma
Ruiz-Picasso, Maya Widmaier-Picasso, Marina Ruiz-Picasso and
Bernard Ruiz-Picasso v Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM), supported by Daim-
lerChrysler AG, which was also a party before the Board of
Appeal. The appellants are represented by Prof. C. Gielen,
Rechtsanwalt, c/o Anwaltskanzlei Nauta Dutilh, Strawinskylaan
1999, NL-1077 XV Amsterdam.

The appellant claims that the Court should:

— annul the judgment delivered on 22 June 2004 by the
Court of First Instance of the European Communities in
Case T-185/02; (1)

— annul the decision of the Third Board of Appeal of OHIM
of 18 March 2002 in Case R 247/2001-3 in so far as the
opposition entered by the appellant against the application
lodged by the trade mark applicant for registration of the
word mark PICARO as a Community trade mark was
rejected;

— order OHIM to bear its own costs and to pay those incurred
by the appellant both at first instance and in the appeal
proceedings.

Pleas and main arguments

— The appeal is brought on the ground of misapplication of

the term ‘likelihood of confusion’.

such a counteraction, at least one of the signs at issue must
have, from the point of view of the relevant public, a clear
and specific meaning so that
the public is capable of
grasping it immediately.

For the purpose of establishing whether visual and phonetic
similarities are counteracted by the conceptual differences,
it is irrelevant that the sign has a meaning which can be
grasped by the public immediately. The degree of visual,
phonetic and conceptual similarity must be determined in
the light of the categories of goods in question and of the
circumstances in which those goods are marketed.

Moreover, the meaning or reputation of the name Picasso,
divorced from the goods in respect of which that trade
mark was registered, cannot be used as an argument to
support the claim that there are conceptual differences and
that, as a result of such a meaning or reputation,
the
conceptual differences cancel out the phonetic and visual
similarities.

— The appeal is brought on the ground of misapplication of
the term ‘likelihood of confusion’ and, in particular, the rule
that the greater the degree of inherent distinctiveness or
distinctiveness resulting from the reputation of the mark
the greater the protection must be.

Whilst the Court of First Instance referred to that rule, it
failed to ascertain whether the mark PICASSO is per se or
inherently distinctive, which,
is
indeed the case.

in the appellants' view,

The judgment under appeal
is wrongly based on the
premiss that, when assessing the likelihood of confusion,
account need be taken solely of the degree of attention at
the time when the consumer considers whether and then
chooses to purchase a particular product. However, it is a
generally recognised principle of trade mark law that the
proprietor of a trade mark is to be protected against poten-
tial confusion both before and after the purchase of his
product.

Moreover, the Court of First Instance wrongly held that,
when ascertaining in opposition proceedings whether there
is a likelihood of confusion,
there is no need to take
account of
the possibility of post-sale confusion. That
applies only in cases of infringement such as that in the
Arsenal case.

(1) Not yet published in the Official Journal of the European Communities.

In the judgment under appeal, the Court of First Instance
laid down a rule according to which conceptual differences
the visual and
can in certain circumstances counteract
phonetic
concerned.
between
According to the Court of First Instance, for there to be

similarities

signs

the