Keywords
Summary

Keywords

1. Community trade mark – Appeals procedure – Appeals before the Community judicature – Legality of a decision of a Board of Appeal – Challenged by the adducing of new facts – Condition governing admissibility – Opposition proceedings

(Council Regulation No 40/94, Arts 63 and 74(1))

2. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the holder of an identical or similar earlier mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Word mark ‘GAS STATION’ and figurative mark ‘BLUE JEANS GAS’

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

Summary

1. The purpose of actions brought before the Court of First Instance challenging decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is to review the legality of those decisions within the meaning of Article 63 of Regulation No 40/94 on the Community trade mark. Facts which are pleaded before the Court without having previously been brought before the departments of the Office can affect the legality of such a decision only if the Office should have taken them into account of its own motion.

It follows from the concluding words of Article 74(1) of Regulation No 40/94, according to which, in proceedings relating to relative grounds for refusal of registration, the Office is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, that the Office is not required to take into account of its own motion facts which have not been put forward by the parties. Therefore, such facts cannot affect the legality of a decision of the Board of Appeal.

(see para. 13)

2. For Italian consumers, there is a likelihood of confusion between the word mark ‘GAS STATION’, registration of which as a Community trade mark is sought for ‘clothing, footwear, headgear’ falling within Class 25 of the Nice Agreement, and the figurative mark including the verbal component ‘BLUE JEANS GAS’, registered previously in Italy for ‘trousers, jackets, jeans, shirts, skirts, heavy jackets, jerseys, sweaters, short coats, socks, shoes, boots, slippers’ falling within the same class.

First, the goods covered by the marks at issue are identical or similar. Second, the opposing signs are, as regards their dominant component, which lies in the word ‘gas’, visually, aurally and conceptually identical. As regards the signs taken as a whole, the differences constituted by the secondary graphic component ‘BLUE JEANS’ and the secondary verbal component ‘station’ will not be kept in mind by the relevant public which will retain the component ‘gas’.

(see paras 31, 34, 36-37, 39)