Keywords
Summary

Keywords

1. Community trade mark – Definition and acquisition of the Community 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

(Council Regulation No 40/94, Art. 8(1)(b))

2. Community trade mark – Definition and acquisition of the Community 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

(Council Regulation No 40/94, Art. 8(1)(b))

3. Community trade mark – Definition and acquisition of the Community 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

(Council regulation No 40/94, Art. 8(1)(b))

4. Community trade mark – Appeals procedure

(Council Regulation No 40/94, Arts 63 and 74(1))

Summary

1. Assessment of the likelihood of confusion with the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 40/94. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character because of the public’s recognition of it. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened.

In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

(see paras 33-35)

2. In order to have an unusually high level of distinctiveness as a result of the public’s potential recognition of it, an earlier mark must, in any event, be familiar to the public on the filing date of the trade mark application or, as the case may be, on the priority date relied on in support of that application. None the less, it is not in principle inconceivable that a survey compiled some time before or after that date could contain useful indications, although it is clear that its evidential value is likely to vary depending on whether the period covered is close to or distant from the filing date or priority date of the trade mark application at issue.

(see para. 38)

3. For average German consumers who have a pet, there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, between the sign VITACOAT, the registration of which was sought in respect of ‘Shampoos, conditioners, preparations for the hair and skin, deodorants; all for animals’, ‘Preparations for killing mites, lice, fleas and other parasites; all for animals’ and ‘Brushes and combs for animals’ in Classes 3, 5 and 21 respectively of the Nice Agreement, and the mark VITAKRAFT registered earlier in Germany to designate goods in part identical and in part similar. Given that the word ‘Kraft’ has a specific meaning which is immediately obvious to German consumers, whereas the word ‘coat’ will have no meaning for them or will be recognised, at the very most, as being an English word which has a different meaning, it must be held that there is a marked conceptual difference between the signs which is capable of counteracting to a large extent the slight visual and phonetic similarities of the signs at issue. There were thus enough differences between the signs, particularly at the conceptual level, to preclude the existence of a likelihood of confusion even in relation to identical goods and even taking into account the low degree of attention given to the choice of the goods in question.

(see paras 61, 68)

4. Actions brought before the Court of First Instance and directed against decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) have the purpose of reviewing the legality of those decisions within the meaning of Article 63 of Regulation No 40/94 on the Community trade mark. Facts which are pleaded before the Court of First Instance without having previously been brought before the departments of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion.

It follows from the concluding words of Article 74(1) of Regulation No 40/94, according to which, in proceedings relating to relative grounds for refusal of registration, OHIM is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, that OHIM is not required to take into account of its own motion facts which have not been put forward by the parties. Therefore, such facts cannot affect the legality of a decision of the Board of Appeal.

On the other hand, neither the parties nor the Court of First Instance itself can be precluded from drawing on national or international case-law for the purposes of interpreting Community law. A party thus has the possibility of referring to national judgments for the first time before the Court of First Instance since it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account but that it infringed a provision of Regulation No 40/94 and the case-law is cited in support of that plea.

(see paras 69-71)