Case T‑599/13

Cosmowell GmbH

v

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

‛Community trade mark — Opposition proceedings — Application for Community figurative mark GELENKGOLD — Earlier Community figurative mark representing a tiger — Relative ground for refusal — Likelihood of confusion — Alteration of the distinctive character of the earlier mark — Phonetic similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009’

Summary — Judgment of the General Court (Ninth Chamber), 7 May 2015

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 — Criteria for assessment

   (Council Regulation No 207/2009, 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 — Similarity of the marks concerned — Figurative mark GELENKGOLD — Figurative mark representing a tiger

   (Council Regulation No 207/2009, 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 — Similarity between the goods or services in question — Criteria for assessment

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

4. 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 — Similarity of the marks concerned — Criteria for assessment — Composite mark

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

5. 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 — Comparison between the signs concerned — Shape of the earlier mark as used by its proprietor not taken into account

   (Council Regulation No 207/2009, Arts 15(1)(a), and 42(2))

6. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Request presented expressly and on time by the applicant — Possibility of submitting the application for the first time before the Board of Appeal — Exclusion

   (Council Regulation No 207/2009, Art. 42(2) and (3))

7. 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 — Similarity of the marks concerned — Figurative marks — Phonetic comparison

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

8. Community trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits

   (Council Regulation No 207/2009, Art. 65(3))

1.  See the text of the decision.

   (see paras 21, 22, 28, 73, 74)

2.  The figurative sign representing a tiger and containing the verbal element GELENKGOLD, registration of which as a Community trade mark is sought for ‘pharmaceutical and veterinary preparations; dietetic preparations adapted for medical use; nutritional supplements; food supplements for medical purposes; food supplements, not for medical purposes; mineral food supplements’, within Class 5 of the Nice Agreement, and the figurative Community trade mark representing a tiger, previously registered in respect of ‘Pharmaceutical preparations; medical and medicinal preparations for humans; plasters, bandages and materials for dressings; disinfectants; preparations for destroying vermin; fungicides; herbicides; insecticides’ falling within the same class present, for the relevant public, made up of the general public as well as specialists in the pharmaceutical, medical and veterinary fields showing a high level of attention, given that the goods covered by the conflicting marks affect, to a greater or lesser degree, the health of humans and pets, a low degree of visual similarity and an average degree of conceptual similarity. Taking into account the fact that the relevant public will refer to the mark applied for by uttering its word element ‘gelenkgold’, whereas, in relation to the earlier mark, the relevant public can only utter the word ‘tiger’, it must be held that the conflicting signs are phonetically different.

   (see paras 23, 65, 72)

3.  See the text of the decision.

   (see para. 25)

4.  See the text of the decision.

   (see paras 29, 48)

5.  In principle, the likelihood of confusion is to be assessed on the basis of a comparison between the mark applied for, as described in the OHIM register, and the earlier mark, as registered. That conclusion is in accordance with the principle that, if a party who has made an application for a Community mark which is subject to opposition proceedings based on an earlier mark is of the view that that earlier mark has only been used in a form which alters its distinctive character, that party may request proof of genuine use of the earlier mark, in accordance with Article 42(2) of Regulation No 207/2009. It is in the course of examining such a request that OHIM can consider the issue, referred to in Article 15(1)(a) of that regulation, as to whether the earlier mark has only been genuinely used in a form which differs from that in which it was registered, and which alters its distinctive character. If that is the case, the opposition is dismissed without OHIM making any finding as to the possible existence of a likelihood of confusion.

   (see paras 35, 36)

6.  See the text of the decision.

   (see paras 38, 39)

7.  Where a purely figurative mark represents a shape which the relevant public is easily able to recognise and associate with a specific, concrete word, they will use that word to refer to the mark, whereas if a figurative mark also includes a word element, in general it will be through the use of that word element that the relevant public will refer to the mark. Thus, as regards the phonetic comparison between such a purely figurative mark and a figurative mark which also includes a word element, the Board of Appeal errs in concluding that it is impossible to make a phonetic comparison of the conflicting signs.

   (see paras 53, 63, 64)

8.  See the text of the decision.

   (see para. 80)