Patent-och registreringsverket v Mats Hansson.
Date: 2019-06-12
31


As a preliminary point, it should be recalled that 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 him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see, to that effect, judgments of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 23, and of 8 June 2017, W. F. Gözze Frottierweberei and Gözze, C‑689/15, EU:C:2017:434, paragraph 41).
35


Those provisions thus aim to protect the individual interests of proprietors of earlier trade marks, and guarantee the trade mark as an indication of origin if there is a likelihood of confusion (see, to that effect, judgment of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 24 and 26, and of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 26).
38


In addition, such disclaimers must not have the effect of calling in question the objectives pursued by Directive 2008/95, referred to in recitals 8 and 10 of the directive, namely to ensure that the conditions for obtaining a registered trade mark are, in general, identical in all Member States, and to guarantee equal protection of trade marks under the legal systems of all the Member States (see, by analogy, judgments of 26 April 2007, Boehringer Ingelheim and Others, C‑348/04, EU:C:2007:249, paragraphs 58 and 59; of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraphs 66 and 67; and of 22 September 2011, Budějovický Budvar, C‑482/09, EU:C:2011:605, paragraphs 30 and 32).
40


On this point, it must be recalled that 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 4(1)(b) of Directive 2008/95 (see, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 29, and of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 19 and the case-law cited).
41


According to settled case-law of the Court, the existence of a likelihood of confusion depends on numerous elements, in particular the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and 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 the relevant factors of the particular case (see, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 16; of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 18; and of 10 April 2008, adidas and adidas Benelux, C‑102/07, EU:C:2008:217, paragraph 29).
42


Those factors also include the distinctiveness of the earlier trade mark, which determines the extent of protection. The Court has previously stated that the more distinctive the earlier mark, the greater the likelihood of confusion will be (see, to that effect, judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 62 and the case-law cited).
43


A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, in particular a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the trade marks, and vice versa. The interdependence of these factors is expressly mentioned in recital 11 of Directive 2008/95, which states that it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion (see, to that effect, judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 19).
44


Similarly, according to the Court’s case-law, the fact that a trade mark is of weak distinctiveness does not exclude a likelihood of confusion, in particular where the signs and the goods or services covered are similar (see, to that effect, judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraph 63 and the case-law cited).
45


That global assessment must, as regards the visual, phonetic or conceptual similarity of the trade marks at issue, be based on the overall impression created by them. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23; of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25; and of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 35).
48


As regards, first, the assessment of the similarity between the signs at issue, it should be recalled that it cannot be confined to taking one sole component of a complex trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, taking account in particular of their distinctive and dominant elements (see, to that effect, judgment of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 36 and the case-law cited).
49


It is therefore necessary in each individual case to analyse the components of a sign and their relative weight in the perception of the public, in order to determine in the light of the particular circumstances of the case the overall impression made on the public by the signs at issue (see, to that effect, judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraphs 34 and 36). It cannot therefore be considered in advance and in general that the descriptive elements of signs at issue must be excluded from the assessment of their similarity (see, in that respect, order of 7 May 2015, Adler Modemärkte v OHIM, C‑343/14 P, not published, EU:C:2015:310, paragraph 38).
50


As regards, second, the distinctiveness of the earlier trade mark, it follows from the Court’s case-law that the determination of distinctiveness depends on the inherent characteristics of the trade mark, including the presence or absence of elements that are descriptive of the goods or services for which it has been registered as a mark (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraphs 20, 22 and 23 and the case-law cited).
53


In this respect, it must be observed, first, that the descriptive, non-distinctive or weakly distinctive elements of a complex trade mark, whether or not mentioned in a disclaimer such as that at issue in the main proceedings, generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by the mark (see, in that respect, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and order of 27 April 2006, L’Oréal v OHIM, C‑235/05 P, not published, EU:C:2006:271, paragraph 43).
54


However, the Court has held that the individual assessment of each sign for the purpose of determining the overall impression produced by it, as required by the Court’s settled case-law, must be made in the light of the particular circumstances of the case and cannot be regarded as being subject to general presumptions (see, to that effect, judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 36).
55


Second, where the earlier trade mark and the sign whose registration is sought coincide in an element that is weakly distinctive or descriptive with regard to the goods or services at issue, the global assessment of the likelihood of confusion within the meaning of Article 4(1)(b) of Directive 2008/95 will admittedly not often lead to a finding that that likelihood exists. However, it follows from the Court’s case-law that a finding that a likelihood of confusion exists cannot, because of the interdependence of the relevant factors, be ruled out in advance and in any event (see, in that respect, order of 29 November 2012, Hrbek v OHIM, C‑42/12 P, not published, EU:C:2012:765, paragraph 63, and judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraphs 48 and 61 to 64).
60


In addition, it follows from Article 6(1)(b) of that directive that, where a sign is validly registered as a trade mark, the exclusive right conferred by the mark does not allow its proprietor to prohibit a third party from using in the course of trade descriptive indications for the goods and services concerned, subject to compliance with certain conditions (see, in that respect, judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 25 and 28; of 10 April 2008, adidas and adidas Benelux, C‑102/07, EU:C:2008:217, paragraphs 46 and 47; and of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 59 to 62).