Reputation and distinctive character relevant factors for making a link between marks not for similarity, not for assessment of similarity

TRADE MARK LAW

Article 8(5): Reputation and distinctive character relevant factors for making a link between marks not for similarity.

"58. It is also clear from Intel Corporation that, con-trary to the assertions made by Ferrero, the Court held in that judgment that the reputation and the distinctive character of the earlier mark constitute relevant factors for the purposes of assessing, not whether the marks at issue are similar, but whether the relevant section of the public makes a link be-tween them."

Reputation and similarity between goods irrelevant for assessment of similarity.

"68. In those circumstances, the General Court was right to find, in paragraphs 61 and 62 of the judg-ment under appeal, that the reputation of the earlier mark and the similarity between the goods respec-tively covered by the marks at issue – even if those factors may be taken into consideration in order to assess likelihood of confusion – do not affect the as-sessment of the similarity of the signs at issue, with the result that they are incapable of calling into question the lack of similarity that was found to exist (see, to that effect, judgment of 11 December 2008 in Case C-57/08 P Gateway v OHIM, not published in the ECR, paragraphs 55 to 57)."

Also for assessing similarity with a word mark, degree of visual and conceptual similarity needs to be determined.

"85. As to substance, it should be borne in mind that, in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, account being taken of the category of goods or ser-vices in question and the circumstances in which they are marketed (Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 36).

86 Furthermore, the visual, aural and conceptual simi-larities between the signs at issue must be the subject of a global assessment in which the assessment of any aural similarity is but one of the relevant factors (see, to
that effect, Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 21).

87 The General Court was therefore correct in examin-ing, in paragraphs 56 to 58 of the judgment under ap-peal, the overall impression created by the two signs at issue, in terms of their possible visual and aural similar-ities."

Existence of family or series of trade marks irrele-vant for assessment of similarity, but relevant for likelihood of confusion.

"97. As to the substance, it should be borne in mind that it is settled law that the existence of a ‘family’ or a ‘series’ of trade marks is an element which must be taken into account for the purposes of assessing the likelihood of confusion. In those circumstances, the likelihood of confusion results from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and may consider, erroneously, that that trade mark is part of that family or series of marks (Il Ponte Finanziaria v OHIM, paragraph 63).

98. However, as is apparent from paragraph 52 above, that element is irrelevant for the purposes of assessing the existence of a similarity between the earlier mark and the challenged mark."

IPPT20110324, CJEU, Ferrero v OHIM

C-552/09 P - ECLI:EU:C:2011:177