Source: EURLEX
Language: en
Format: md

Case T‑238/17

Alexander Gugler

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU figurative mark GUGLER — Earlier national company name Gugler France — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) — Likelihood of confusion)

Summary — Judgment of the General Court (Eighth Chamber), 25 September 2018

1. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Conditions — Interpretation in the light of EU law — Assessment by reference to the criteria determined by the national law governing the sign relied on

   (Council Regulation No 207/2009, Arts 8(4) and 53(1)(c))
2. EU trade mark — Definition and acquisition of the EU 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 — Criteria for assessment

   (Council Regulation No 207/2009, Art. 8(1)(b))
3. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark GUGLER and company name Gugler France

   (Council Regulation No 207/2009, Arts 8(1)(b) and 53(1)(c))
4. EU trade mark — Definition and acquisition of the EU 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 — Economic link between the proprietors of the conflicting signs

   (Council Regulation No 207/2009, Art. 8(1)(b))

1. See the text of the decision.

   (see paras 22-24)
2. The finding of a likelihood of confusion is intended to protect the trade mark’s function of indicating origin, by making it possible to oppose the registration of a trade mark or to seek a declaration of invalidity thereof, if there is a risk that consumers may be misled as to the origin of the goods or services in question, on the false assumption that the goods and services covered by the signs at issue come from the same undertaking or from economically-linked undertakings.

   The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling that person, without any possibility of confusion, to distinguish those goods or services from others which have a different origin. In order for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all goods or services bearing that trade mark have been manufactured or supplied under the control of a single undertaking which is responsible for their quality.

   In order for that guarantee of origin, which constitutes the essential function of a trade mark, to be ensured, the trade-mark proprietor must be protected against competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling goods illegally bearing it.

   (see paras 39-41)
3. See the text of the decision.

   (see paras 42-45, 49-50)
4. The assessment of the likelihood of confusion is an objective one. In particular, it is not necessary that the consumer should be aware that he is mistaken in believing that the goods and services in question come from the same undertaking or from economically-linked undertakings. Similarly, he cannot be required to know that he will not err as to the origin of the goods because he is aware of the existence of an economic link between the proprietors of the conflicting signs.

   As is apparent from settled case-law, the precise commercial origin that the relevant public will attribute to the goods or services covered by each of the two marks at issue is of little importance so far as a likelihood of confusion between them is concerned. What is important is whether that commercial origin could be perceived by the relevant public as being the same in both cases.

   It must therefore be held that it is not necessary, in order to exclude the likelihood of confusion where the proprietors of the conflicting signs are economically linked, that the consumer must be aware of that economic link.

   (see paras 46-48)

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