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 – Likelihood of confusion with the earlier mark – Figurative marks including the verbal elements ‘grupo sada’ and ‘sadia’

(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 – Likelihood of confusion with the earlier mark – Coexistence of earlier marks on the market – Effect

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

Summary

1. For the average Spanish consumer, there is a risk of confusion between the figurative sign including the verbal element ‘grupo sada’, the registration of which as a Community trade mark is sought for ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’ in Class 29 of the Nice Agreement, and the figurative mark including the verbal element ‘sadia’, registered earlier in Spain for the same products, in as much as, given the identical nature of the goods covered by the marks at issue and the visual and phonetic similarities between the dominant element of the mark applied for, namely the verbal element ‘sada’, and the earlier mark, the overall impression created by the marks concerned will lead the relevant public to believe that the goods identified by those marks originate from the same undertaking or, at the very least, from economically linked undertakings. Moreover, the verbal element ‘grupo’ in the mark applied for, which denotes a group of companies, although it is not the dominant element, is none the less capable of suggesting an association between the undertakings concerned in the form of a ‘group’ of companies thereby increasing the likelihood of confusion between the marks at issue.

(see paras 58, 69)

2. In the context of an opposition proceeding brought on the basis of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark by the proprietor of an earlier mark the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion found to exist by the authorities of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical.

In that respect, the mere production by the applicant of a list containing its earlier marks which it alleges coexisted on the market with the earlier mark of the opponent is insufficient to show that the likelihood of confusion between the marks at issue is reduced, still less eliminated.

(see paras 86-87)