Increased distinctiveness as a result of the use of earlier marks cannot not offset the lack of similarity between the marks at issue

TRADE MARK LAW

If it is determined that marks are not similar and the likelihood of confusion is therefore excluded, increased distinctiveness as a result of the use of earlier marks cannot not offset the lack of similarity between the marks at issue.

"48. In that way, by holding that the Board of Appeal’s failure to examine the enhanced distinctiveness of the earlier marks, acquired through use, meant that the contested decision was invalid, the General Court called for the Board of Appeal to examine a factor that was of no relevance to the assessment as to whether there was a likelihood of confusion, for the purposes of Article 8(1)(b) of Regulation No 207/2009, between the marks at issue. Since the General Court had already found that the marks at issue were dissimilar overall, any likelihood of confusion had to be ruled out and the possible enhanced distinctiveness of the earlier marks, acquired through use, could not offset the lack of similarity between the marks at issue."

IPPT20140123, CJEU, OHIM v WeserGold

C‑558/12 P - ECLI:EU:C:2014:22