Il Ponte Finanziaria SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2007-09-13
32. Even though it is conceivable that aural similarity alone could create a likelihood of confusion, it must be noted that the existence of such a likelihood must be established as part of a global assessment as regards the conceptual, visual and aural similarities between the signs at issue (see Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 21; see also, to that effect, Case C-334/05 P OHIM v Shaker  [2007] ECR I-0000, paragraphs 34 and 35).
33.  Such a global assessment of the likelihood of confusion must be based on the overall impression created by those marks, bearing in mind, in particular, their distinctive and dominant components (see Mülhens v OHIM , paragraph 19, and, in particular, in respect of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Case C‑251/95 SABEL  [1997] ECR I-6191, paragraph 23, and Case C‑342/97 Lloyd Schuhfabrik Meyer  [1999] ECR I-3819, paragraph 25).
34. That global assessment means that conceptual and visual differences between two signs may counteract aural similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see Case C‑361/04 P Ruiz-Picasso and Others  v OHIM  [2006] ECR I‑643, paragraph 20; Mülhens v OHIM , paragraph 35; and Case C-171/06 P T.I.M.E ART v OHIM  [2007] ECR I-0000, paragraph 49).
35. In that regard, as the Advocate General observed at paragraph 56 of her Opinion, the assessment of any aural similarity is but one of the relevant factors for the purpose of the global assessment. Therefore, one cannot deduce that there is necessarily a likelihood of confusion where mere phonetic similarity between two signs is established ( Mülhens  v OHIM , paragraphs 21 and 22).
38. Moreover, the applicant cannot require the Court to substitute its own assessment for that of the Court of First Instance. It is settled case-law that the effect of Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice is that an appeal lies on points of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, which is not alleged in this case, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 26, and Case C-412/05 P Alcon  v OHIM  [2007] ECR I-0000, paragraph 71).
44. With regard, next, to the appellant’s criticism concerning the Court of First Instance’s assessment of the visual similarity, as set out at paragraphs 92 to 101 of the judgment under appeal, it should be recalled that, according to settled case-law, it follows from Article 225 EC, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Court’s Rules of Procedure that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (Case C-352/98 P Bergaderm and Goupil  v Commission  [2000] ECR I-5291, paragraph 34, and Case C-286/04 P Eurocermex  v OHIM  [2005] ECR I-5797, paragraph 42).
48. While it is the case that, under the principle of the interdependence of relevant factors, in particular the similarity between the trade marks and between the goods or services covered, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see, inter alia, Case C‑39/97 Canon  [1998] ECR I‑5507, paragraph 17; Lloyd Schuhfabrik Meyer , paragraph 19; and T.I.M.E. ART  v OHIM , paragraph 35), the Court has held that, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, the likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered. Those conditions are cumulative (see Case C-106/03 P Vedial  v OHIM  [2004] ECR I-9573, paragraph 51).
50. Therefore, the Court of First Instance was able to conclude, without erring in law, that the conflicting marks, considered individually, did not display the minimum degree of similarity required for it to be possible to establish a likelihood of confusion solely on the basis of the highly distinctive character of the earlier marks or of the fact alone that the goods covered by the earlier marks and those covered by the trade mark applied for are identical.
51. In the absence of a minimum degree of similarity, the Court of First Instance cannot be criticised for having failed to apply the principle of interdependence in its overall assessment of the likelihood of confusion.
62. While it is true that, in the case of opposition to an application for registration of a Community trade mark based on the existence of only one earlier trade mark that is not yet subject to an obligation of use, the assessment of the likelihood of confusion is to be carried by comparing the two marks as they were registered, the same does not apply where the opposition is based on the existence of several trade marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ or ‘series’ of marks.
63. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see Alcon v OHIM , paragraph 55, and, to that effect, Canon , paragraph 29). Where there is a ‘family’ or ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for or considers erroneously that that trade mark is part of that family or series of marks.
64. As the Advocate General stated at paragraph 101 of her Opinion, no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market.
72. With regard, first of all, to the objection that the Court of First Instance required continuous use of the trade mark THE BRIDGE (No 642952) during the whole of the reference period, there is, as is apparent from the case‑law of the Court of Justice, genuine use of a trade mark where the mark 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 registration. When assessing whether use of a trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark in the course of trade is real, including, inter alia, the scale and frequency of use of the mark (see Case C-416/04 P Sunrider  v OHIM [2006] ECR I-4237, paragraph 70; see also, to that effect, regarding Article 10(1) of Directive 89/104/EEC, a provision which is identical to Article 15(1) of Regulation No 40/94, the judgement in Case C-40/01 Ansul  [2003] ECR I-2439, paragraph 43, and the order in Case C-259/02 La Mer Technology  [2004] ECR I-1159, paragraph 27).
73. The question whether use is sufficient to maintain or create market share for the goods or services protected by the mark thus depends on several factors and on a case-by-case assessment. The frequency or regularity of the use of the trade mark is one of the factors which may be taken into account (see Sunrider v OHIM , paragraph 71; see also, to that effect, La Mer Technology , paragraph 22).
81. Under Article 15(1) of Regulation No 40/94, a trade mark which has not been put to genuine use during the relevant period is subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.
82. Under Article 15(2)(a) of that regulation, use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered also constitutes use within the meaning of Article 15(1).
83. Those provision are essentially the same as those in Article 10(1) and (2)(a) of Directive 89/104 to approximate the laws of the Member State relating to trade marks.
84. In that regard, it must be held that the Court of First Instance did not commit any error of law in disregarding the appellant’s argument that use of the trade mark Bridge (No 370836) during the reference period was established by evidence adduced for the purpose of demonstrating use of the trade mark THE BRIDGE (No 642952).
85. Without it being necessary to examine whether the trade mark THE BRIDGE (No 642952) may be regarded as being different solely by reason of elements which do not alter the distinctive character of the trade mark Bridge (No 370836), it must be stated that use of the former mark has not been established and cannot therefore in any way serve as evidence of use of the latter.
86. In any event, while it is possible, as a result of the provisions referred to in paragraphs 81 and 82 of the present judgment, to consider a registered trade mark as used where proof is provided of use of that mark in a slightly different form from that in which it was registered, it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former.
96. Admittedly, in proceedings concerning an action against a decision of an appeal board of OHIM on an opposition to registration of a mark based on the likelihood of confusion with an earlier mark, OHIM cannot alter the terms of the dispute before the Court of First Instance, as delimited in the respective claims and allegations of the applicant for registration and of the opposing party (see, to that effect, Case C‑106/03 P Vedial  v OHIM [2004] ECR I-9573, paragraph 26, and, by analogy, Case C-447/02 P KWS Saat  v OHIM  [2004] ECR I-10107, paragraph 58).