26.11.2005   

EN

Official Journal of the European Union

C 296/12

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set aside the judgment of the Court of First Instance (Fourth Chamber) of 22 June 2005 in Case T-34/04 (1);

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give final judgment on the case and find in favour of the application made at first instance, or, in the alternative, refer the case back to the Court of First Instance;

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order the Office for Harmonisation in the Internal Market to pay the costs of the proceedings.

1.

The Court of First Instance failed to recognise that the rights of the earlier mark are infringed by the incorporation of the separate formative word mark ‘POWER’ in the trade mark applied for. The extent of the protection granted by the German authorities for the word ‘POWER’ is unlimited and consequently, the goods in question have the exclusive trade mark rights. It must remain possible and without restriction for the earlier trade mark to be combined with free-standing verbal or graphic elements, if this is required for it to be marketed. However, the judgment under appeal restricts the appellant's creative freedom.

2.

The Court of First Instance failed to recognise that the trade mark applied for reuses the word contained in the earlier trade mark in a formative way and has taken it over as a trade mark. The dominance of the word ‘POWER’ in the trade mark applied for is not offset by the word ‘TURKISH’, since this, in a manner characteristic of the tobacco industry, alludes to the tobacco designation ‘Turkish blend’ frequently used in that industry. It can thus be considered as a reference to the Turkish origin of the tobacco mixture which is put together with the word ‘POWER’ to form the name of a trade mark. Therefore, the Court of First Instance erred in taking the view that the word combination ‘TURKISH POWER’ has a suggestive effect independent of the word ‘POWER’.

3.

The Court of First Instance erroneously concluded that there were sufficient aural differences between the two conflicting marks, since the danger of aural confusion between the two is sufficient in itself to prevent registration of the trade mark applied for. As regards the visual similarities of the two marks, the Court of First Instance failed to consider that, from a visual perspective also, trade marks are predominantly characterised by the words of which they are composed, because consumers are more familiar with words than with images and can remember them more easily. The conclusion that the words which make up the trade mark applied for are dominated by the visual element is therefore unfounded.

4.

The Court of First Instance erroneously assumed that the relevant public is particularly attentive: it is not established that consumers are more attentive when buying cigarettes than when buying groceries or other consumer goods. Even if particular attentiveness could none the less be assumed, it cannot be ruled out that the word mark ‘POWER’ will make customers think of the earlier mark and that the trade mark applied for would immediately be brought into connection with the appellant's company, that is to say, as a sub-brand of a Turkish mix of ‘POWER’ tobacco.