Case C‑558/12 P

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

v

riha WeserGold Getränke GmbH & Co. KG

‛Appeal — Community trade mark — Word mark WESTERN GOLD — Opposition by the proprietor of the national, international and Community word marks WeserGold, Wesergold and WESERGOLD’

Summary — Judgment of the Court (Sixth Chamber), 23 January 2014

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 — Highly distinctive character of the earlier mark — Not relevant where no similarity between the marks concerned

   (Council Regulation No 207/2009, Art. 8(1)(b))

2. Appeal — Interest in bringing proceedings — Condition — Appeal capable of procuring an advantage for the party bringing it — Admissibility of a claim seeking substitution of grounds which amounts to a defence to one of the opposing party’s pleas

   (Art. 256 TFEU; Statute of the Court of Justice, Art. 56, second para.)

1.  It is settled case-law that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered, and that those conditions are cumulative.

   The Court’s case-law is well established in that regard. The Court has held on a number of occasions that, where there is no similarity between the earlier mark and the mark applied for, the enhanced distinctiveness of the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue.

   Moreover, the Court dismissed as clearly unfounded the ground of appeal alleging that the General Court had erred in law in holding that an opposition based on Article 8(1)(b) of Regulation No 207/2009 could, in some cases, be rejected simply on the basis of an examination of the similarity of the marks and specifically, that is to say, without considering the possible high distinctiveness of the earlier mark. The Court of Justice held, in essence, that the General Court had not erred in law in holding that, when the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) had reached the conclusion that the marks in question could in no way be regarded as similar by the relevant public, the Board was entitled to infer that there was no likelihood of confusion, without having first, in the course of an overall assessment of the likelihood of confusion, to examine, in particular, the possible highly distinctive character of the earlier mark.

   Similarity of the marks in question is thus a necessary condition for it to be found that there is a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009. Accordingly, the lack of similarity between the marks at issue renders Article 8 of Regulation No 207/2009 inapplicable.

   The enhanced distinctiveness of a mark, acquired through use, must therefore be taken into account when determining whether the similarity between the signs or between the goods or services covered is sufficient to give rise to a likelihood of confusion.

   (see paras 41-45)

2.  In order for a claim seeking substitution of grounds to be admissible, the party submitting that claim must have an interest in doing so, in that the claim must be capable, if successful, of procuring an advantage for that party. That may be the case where the request for substitution of grounds amounts to a defence to one of the appellant’s pleas.

   (see para. 55)

Case C‑558/12 P

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

v

riha WeserGold Getränke GmbH & Co. KG

‛Appeal — Community trade mark — Word mark WESTERN GOLD — Opposition by the proprietor of the national, international and Community word marks WeserGold, Wesergold and WESERGOLD’

Summary — Judgment of the Court (Sixth Chamber), 23 January 2014

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 — Highly distinctive character of the earlier mark — Not relevant where no similarity between the marks concerned

   (Council Regulation No 207/2009, Art. 8(1)(b))

2. Appeal — Interest in bringing proceedings — Condition — Appeal capable of procuring an advantage for the party bringing it — Admissibility of a claim seeking substitution of grounds which amounts to a defence to one of the opposing party’s pleas

   (Art. 256 TFEU; Statute of the Court of Justice, Art. 56, second para.)

1.  It is settled case-law that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark was registered, and that those conditions are cumulative.

   The Court’s case-law is well established in that regard. The Court has held on a number of occasions that, where there is no similarity between the earlier mark and the mark applied for, the enhanced distinctiveness of the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue.

   Moreover, the Court dismissed as clearly unfounded the ground of appeal alleging that the General Court had erred in law in holding that an opposition based on Article 8(1)(b) of Regulation No 207/2009 could, in some cases, be rejected simply on the basis of an examination of the similarity of the marks and specifically, that is to say, without considering the possible high distinctiveness of the earlier mark. The Court of Justice held, in essence, that the General Court had not erred in law in holding that, when the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) had reached the conclusion that the marks in question could in no way be regarded as similar by the relevant public, the Board was entitled to infer that there was no likelihood of confusion, without having first, in the course of an overall assessment of the likelihood of confusion, to examine, in particular, the possible highly distinctive character of the earlier mark.

   Similarity of the marks in question is thus a necessary condition for it to be found that there is a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009. Accordingly, the lack of similarity between the marks at issue renders Article 8 of Regulation No 207/2009 inapplicable.

   The enhanced distinctiveness of a mark, acquired through use, must therefore be taken into account when determining whether the similarity between the signs or between the goods or services covered is sufficient to give rise to a likelihood of confusion.

   (see paras 41-45)

2.  In order for a claim seeking substitution of grounds to be admissible, the party submitting that claim must have an interest in doing so, in that the claim must be capable, if successful, of procuring an advantage for that party. That may be the case where the request for substitution of grounds amounts to a defence to one of the appellant’s pleas.

   (see para. 55)