General Court EU should have examined article 8(5) CTM because of conceptual similarity

TRADEMARK LAW

Concept “similarity” has the same meaning when used for relative grounds for refusal in article 8(1)(b) (similarity with earlier trade mark for similar goods and services) and article 8(5) CTMR (similarity with earlier trade mark)

"39. Given that it is not apparent either from the wording of paragraphs 1(b) and 5 of Article 8 of Regulation No 207/2009 or from the case-law of the Court of Justice that the concept of similarity has a different meaning in each of those paragraphs, it follows, inter alia, that, if, in examining the conditions for the application of Article 8(1)(b) of that regulation, the General Court concludes that there is no similarity between the signs at issue, paragraph 5 of Article 8 also necessarily does not apply to the case in point. Conversely, if the General Court takes the view, in the context of that same examination, that there is some similarity between the signs at issue, such a finding is equally valid with regard to the application of both Article 8(1)(b) and Article 8(5) of that regulation."

Article 8(5) CTMR requires a lower similarity than article 8(1) under b CTMR because only a possible link between marks and no confusion is required

"41. The degree of similarity between the signs at issue required by each of the paragraphs of that provision is different. Whereas the application of Article 8(1)(b) of Regulation No 207/2009 is conditional on a finding of a degree of similarity between those signs which is capable of giving rise to a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood of confusion is not, by contrast, necessary as a condition for the application of paragraph 5 of that article.

42. Since Article 8(5) of Regulation No 207/2009 merely requires the similarity which exists to be capable of leading the relevant public to make a connection between the signs at issue, that is to say, to establish a link between them, but does not require that similarity to be capable of leading that public to confuse those signs, it must be held that the protection which that provision lays down in favour of marks with a reputation may apply even if there is a lower degree of similarity between the signs at issue (see, by analogy, judgment in Adidas-Salomon and Adidas Benelux, C‑408/01, EU:C:2003:582, paragraphs 27, 29 and 31, and judgment in Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 57, 58 and 66)."

The General Court EU was right in saying that only a small conceptual similarity was required for likelihood of confusion as set out in 8(1)(b) CTMR

"45. In that regard, it must be pointed out that, when it examined the conditions for the application of Article 8(1)(b) of Regulation No 207/2009, the General Court held, in paragraph 29 of the judgment under appeal, that there was a low degree of conceptual similarity between the signs at issue. 46 However, in paragraph 33 of that judgment, it took the view that, in the light of the absence of any visual and phonetic similarity, it had been rightly found in the contested decision that those signs were different overall. Consequently, the General Court held that, as one of the cumulative conditions for the application of Article 8(1)(b) was not satisfied, there was no need to carry out a global assessment of the likelihood of confusion."

Because of the small conceptual similarity should have examined whether the public is establishing a link with the renown or reputation of the earlier mark for the purpose of 8(5) CMTR

"46. However, as regards the assessment of the conditions for the application of Article 8(5) of Regulation No 207/2009, the General Court stated, in paragraph 39 of the judgment under appeal, that it was apparent from the comparison of the signs at issue, which was carried out in the context of paragraph 1(b) of that article, that those signs were not similar and therefore that the conditions for the application of paragraph 5 of that article were not satisfied.

47. In ruling to that effect, the General Court erred in law. The Court could not disregard its own finding, in paragraph 29 of the judgment under appeal, that there was a conceptual similarity between the signs at issue.

In those circumstances, the General Court should have examined whether that degree of similarity, albeit low, was not sufficient, on account of the presence of other relevant factors such as the renown or reputation of the earlier mark, for the relevant public to establish a link between those signs, for the purpose of Article 8(5) of Regulation No 207/2009."

IPPT20151210, CJEU, El Corte Inglés v OHIM

C-603/14 P - ECLI:EU:C:2015:807