General Court should have determined whether the public makes a link between two marks despite low degree of similarity
20-01-2015 Print this page
The General Court should have determined whether the low degree of similarity was nevertheless sufficient, on account of the presence of other relevant assessment factors (such as the reputation or recognition enjoyed by the earlier mark), for the public to make a link between those two marks
"73 According to the same case-law, Article 8(5) of Regulation No 40/94, like Article 8(1)(b), is manifestly inapplicable where the General Court rules out any similarity between the marks at issue. It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public.
74 In the present cases, the General Court found in paragraph 72 of the judgments under appeal that, ‘having regard to the assessments made in paragraphs 41 to 51 [of those judgments]’, the signs at issue lacked the requisite similarity for the purposes of applying Article 8(5) of Regulation No 40/94.
75 However, although the General Court found in paragraphs 41 to 51 of the judgments under appeal that those signs were not at all visually or phonetically similar, it also found that there was a low degree of conceptual similarity between them. Thus, the General Court did not, in those judgments, rule out all possibility that the marks at issue were similar.
76 Consequently, in accordance with the case-law cited in paragraph 73 above, the General Court was wrong to rule out the application of Article 8(5) of Regulation No 40/94 without first undertaking an overall assessment of the marks at issue in order to ascertain whether that low degree of similarity was nevertheless sufficient, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, for the relevant public to make a link between those marks."
IPPT20141120, CJEU, Intra-Presse v BHIM
C581/13 P en C582/13 P - ECLI:EU:C:2014:2387
