Claude Ruiz-Picasso and Others v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2006-01-12
18. As is apparent both from the tenth recital in the preamble to Directive 89/104 and the seventh recital in the preamble to Regulation No 40/94, the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association which can be made with the used or registered sign and on the degree of similarity between the trade mark and the sign and between the goods or services identified. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case (see to that effect, regarding Directive 89/104, SABEL , paragraph 22).
19. Furthermore, that global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (see, in particular, SABEL , paragraph 23).
20. By stating in paragraph 56 of the judgment under appeal that, where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences observed between those signs may counteract the visual and phonetic similarities between them, and by subsequently holding that that applies in the present case, the Court of First Instance did not in any way err in law.
21. As OHIM rightly maintains, such a finding is, in this case, entirely part of the process designed to ascertain the overall impression given by those signs and to make a global assessment of the likelihood of confusion between them.
22. It must be borne in mind that, in paragraph 54 of the judgment under appeal, the Court of First Instance found that the two signs at issue are visually and phonetically similar, but that the degree of similarity in the latter respect is low. It also held in paragraph 55 of that judgment that those signs are not similar from a conceptual point of view.
23. Thereafter, the Court of First Instance ruled, in paragraph 56 et seq. of the judgment under appeal, on the overall impression given by those signs and concluded, following a factual assessment which it is not for the Court to review in an appeal where there is no claim as to distortion of the facts, that there was a counteraction of the visual and phonetic similarities on account of the particularly obvious and pronounced nature of the conceptual difference observed in the present case. In doing so, the Court of First Instance, in its overall assessment of the likelihood of confusion and as is apparent from paragraph 59 of that judgment, took account in particular of the fact that the degree of attention of the relevant public is particularly high as regards goods like motor vehicles.
27. It is apparent from paragraphs 55 and 57 of that judgment that the Court of First Instance considered in particular, also following factual assessments which it is not for the Court to review in the context of an appeal, that, confronted with the word sign PICASSO, the relevant public inevitably sees in it a reference to the painter and that, given the painter’s renown with that public, that particularly rich conceptual reference is such as greatly to reduce the resonance with which, in this case, the sign is endowed as a mark, among others, of motor vehicles.
36. According to consistent case-law, the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (see, inter alia, Lloyd Schuhfabrik Meyer , paragraph 25).
37. Thus, in particular, in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed ( Lloyd Schuhfabrik Meyer , paragraph 27).
38. In that context, the Court has already held that, for the purpose of an overall assessment of the likelihood of confusion, it must be borne in mind inter alia that the average consumer’s level of attention is likely to vary according to the category of goods or services in question ( Lloyd Schuhfabrik Meyer , paragraph 26).
39. Therefore, the Court of First Instance was fully entitled to hold, in paragraph 59 of the judgment under appeal, that, for the purposes of assessing, as provided for in Article 8(1)(b) of Regulation No 40/94, whether there is any likelihood of confusion between marks relating to motor vehicles, account must be taken of the fact that, in view of the nature of the goods concerned and in particular their price and their highly technological character, the average consumer displays a particularly high level of attention at the time of purchase of such goods.
41. As to the fact that the relevant public is also likely to perceive such goods and the marks relating to them in circumstances unconnected with any act of purchase and to display, where appropriate, a lower level of attention on such occasions, the Court of First Instance was also fully entitled to observe, again in paragraph 59 of the judgment under appeal, that the existence of such a possibility does not prevent the taking into account of the particularly high level of attention exhibited by the average consumer when he prepares and makes his choice between different goods in the category concerned.
46. After concluding that that was indeed the case, the Court stated that the fact that a sign to be found at the place of sale of the goods at issue drew consumers’ attention to the fact that those goods did not come from the proprietor of the mark did not affect such a conclusion. It is against that particular background that the Court, in paragraph 57 of Arsenal Football Club , referred in particular to the fact that even on the assumption that that type of notice may be relied upon by the interested party as a defence, it was possible, in the case which gave rise to that judgment, that some consumers, in particular if they came across the goods after they had been sold and taken away from the place of sale, might interpret the sign affixed to those goods as designating the proprietor of the mark concerned as the undertaking of origin of the goods.