Keywords
Summary

Keywords

1. Community trade mark – Appeals procedure – Appeals before the Community judicature – Jurisdiction of the Court of First Instance – Review of the legality of the decisions of the Boards of Appeal

(Council Regulation No 40/94, Art. 63)

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

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

3. Appeals – Grounds – Incorrect assessment of the facts and evidence – Inadmissibility – Review by the Court of Justice of the assessment of the facts and evidence – Possible only where the clear sense of the evidence has been distorted

(Art. 225(1) EC; Statute of the Court of Justice, Art. 58, first para.)

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 – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, 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

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

6. Appeals – Grounds – Mere repetition of the pleas and arguments put forward before the Court of First Instance – Error of law relied on not identified – Inadmissible

(Art. 225 EC; Statute of the Court of Justice, Art. 58, first para; Rules of Procedure of the Court, Art. 112(1)(c))

7. Community trade mark – Appeals procedure – Appeals before the Community judicature – Jurisdiction of the Court of First Instance – Review of the legality of the decisions of the Boards of Appeal

(Council Regulation No 40/94, Arts 61(2), 62(2), 63, 74(2), and 76)

Summary

1. Within the restrictions of Article 63 of Regulation No 40/94 on the Community trade mark, as interpreted by the Court of Justice, the Court of First Instance can carry out a full review of the legality of the decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), if necessary examining whether those boards have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed. In this connection, where one party has called into question the Board of Appeal’s assessment relating to the likelihood of confusion by virtue of the principle of the interdependence of the factors taken into account, in particular the similarity of the trade marks and that of the goods and services covered, the Court of First Instance is competent to examine the Board of Appeal’s assessment of the similarity of the signs at issue. Where it is called upon to assess the legality of a decision of a Board of Appeal of the Office, the Court of First Instance cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings whose legality is being disputed before the Court of First Instance.

(see paras 39, 47-48)

2. The distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the earlier trade mark and the trade mark applied for is sufficient to give rise to a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark.

However, in order to assess whether the goods and the services are similar or identical, all the relevant factors relating to the link between those goods or those services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary.

Consequently, the Court of first Instance did not err in law in comparing the goods and the services, without relying, for that purpose, on the assumption that the marks at issue are identical and that the earlier mark has a distinctive character.

(see paras 64-65, 67)

3. In accordance with Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal. Such distortion must be obvious from the documents on the Court’s file, without there being any need to carry out a new assessment of the facts and the evidence.

(see paras 68-69)

4. The global assessment of the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately.

(see para. 98)

5. Where an opposition is based on the existence of several marks with shared characteristics enabling them to be regarded as part of the same ‘family’ or ‘series’ of trade marks, account should be taken, in the assessment of the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, of the fact that, in the case of a ‘family’ or ‘series’ of trade marks, a likelihood of confusion results from the fact that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that the latter trade mark is part of that family or series of marks.

(see para. 101)

6. Provided that an appellant challenges the interpretation or application of Community law by the Court of First Instance, the points of law examined at first instance may be discussed again in the course of an appeal. Indeed, if an appellant could not thus base his appeal on pleas in law and arguments already relied on before the Court of First Instance, an appeal would be deprived of part of its purpose.

However, it follows from Article 225 EC, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 112(1)(c) of the Rules of Procedure of the Court of Justice, that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal. That requirement is not satisfied by an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the judgment under appeal, merely repeats or reproduces verbatim the pleas in law and arguments previously submitted to the Court of First Instance.

(see paras 110-111)

7. The purpose of an action before the Court of First Instance is to review the legality of the decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) within the meaning of Article 63 of Regulation No 40/94 on the Community trade mark. It follows from that provision that facts not submitted by the parties before the departments of the Office cannot be submitted at the stage of the appeal brought before the Court of First Instance.

It is also apparent from that provision that the Court of First Instance cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of the Office must be assessed in the light of the information available to it when it adopted that decision.

In this connection, it follows from Articles 61(2) and 76 of Regulation No 40/94 that, for the purposes of the examination as to the merits of the appeal brought before it, the Board of Appeal is to invite the parties, as often as necessary, to file observations on communications issued by itself and that it may also order preliminary measures, among which feature the submission of matters of fact or evidence. Article 62(2) of Regulation No 40/94 states that if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed against, that department is to be bound by the ratio decidendi of the Board of Appeal, ‘in so far as the facts are the same’. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before the Office. Therefore an applicant cannot argue that it did not have adequate opportunities to submit evidence to the Office.

In addition, Article 74(2) of Regulation No 40/94 provides that the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. Evidence which has never been produced before the Office has not, in any event, been produced in due time and cannot be used as a criterion with which to assess the legality of the decision of the Board of Appeal.

(see paras 136-141, 143)