Figure wrongly disregarded in assessing the similarity of the signs at issuee

Print this page 19-05-2015
IPPT20150319, CJEU, Mega Brands v OHIM

TRADEMARK LAW

 

Purely descriptive element does not preclude from being acknowledged as dominant for the purposes of assessing the similarity of the signs at issue

 

"In so far as the appellant submits that such a categorisation is incompatible with the descriptive character that the General Court conferred on that word in paragraph 26 of the judgment under appeal, suffice it to note that, even if a verbal element should be considered to have a purely descriptive character, that character does not preclude that element from being acknowledged as dominant for the purposes of assessing the similarity of the signs at issue."

 

ECJ was required to carry out the comparison of the marks at issue by considering each of them in its entirety

 

"With regard to paragraph 23 of the judgment under appeal, which concerns the phonetic similarity of the figurative mark applied for and the earlier mark, also referred to in paragraph 25 of that judgment, it makes no mention of the presence of the figure ‘4’ in the earlier mark. In particular, it does not contain any reference to the pronunciation of that figure in the form of ‘cuatro’, which is that of the Spanish language used by the public considered to be relevant for that mark, and also contains no assessment from which it follows that the phonetic impression produced by that sound is negligible.
Accordingly, the General Court erred in law in not carrying out the comparison of the marks at issue by considering each of them in its entirety."

 

The General Court was required to provide any reasoning which would make it possible to understand why it categorized the element ‘magnet’ as dominant and why the number ‘4’ was not included in its assessment of the similarity of the signs at issue

 

"First, the General Court has not provided any reasoning, not even implicitly, which makes it possible to understand why it categorised the element ‘magnet’ as dominant (see, above, paragraph 39 of the present judgment).
Second, the General Court has also failed to provide any reasoning, even if only implicit reasoning, for its decision not to include the figure ‘4’ in its assessment of the similarity of the signs at issue (see, above, paragraphs 39 to 41 of the present judgment)."

 

IPPT20150319, CJEU, Mega Brands v OHIM

 

C-182/14 P - ECLI:EU:C:2015:187