Legal Law

Intellectual Property Law – European Trademarks – Opposition to Trademark Registration – Visual

Matter of Castellani SpA v. Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-149/06) [2007], concerned an opposition to a European Community trade mark. On September 25, 2001, the applicant filed an application for the registration of a Community Trademark. The application was filed with the Office for Harmonization in the Internal Market (Trademarks, Designs and Models) (OHIM), and was carried out in accordance with Council Regulation (EC) No. 40/94 (on the Community Trademark).

The plaintiff requested the registration of the figurative mark ‘CASTELLANI’. On September 4, 2002, a company named Markant filed a notice of opposition to the registration of the mark on the grounds of an earlier registration. The company had registered the word ‘CATELLUCA’.

The opposition concerned all the goods covered by the earlier registrations and was directed against all the goods for which registration was sought – the risk of confusion for the public due to the similarity between the earlier mark and the mark sought and the goods in question.

The OHIM Opposition Division dismissed the opposition in its entirety.

Once the mark was considered, it was decided that the mark applied for and the earlier mark were visually as well as phonetically different. Furthermore, the relevant public would not perceive any conceptual similarity between the marks in dispute.

The opponent appealed this resolution before the Opposition Division. The First Board of Appeal of the OHIM annulled this decision of the Opposition Division and dismissed the application for registration on the grounds that there was a risk of confusion between the mark “CASTELLANI” and the earlier mark “CASTELLUCA”. However, the plaintiff filed an appeal, asking the Court of First Instance to annul the contested decision. The applicant raised a single ground of infringement of Article 8(1)(b) of Regulation 40/94.

The Court of Justice held that, in making an overall assessment of the conflicting marks, the visual, phonetic and conceptual differences between the conflicting signs were sufficient, despite the identical nature of the designated goods, to exclude that the similarities between they would give rise to a likelihood of confusion on the part of the average German consumer.

It was decided that the risk of confounding should be assessed globally. That assessment had to be made on the basis of the relevant public’s perception of the signs and the goods or services in question. Furthermore, the assessment had to take into account all factors relevant to the circumstances of the case, in particular, the interdependence of the similarity between the signs and between the designated goods and/or services.

The global assessment of the likelihood of confusion, as regards the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression produced by the signs, taking into account their distinctive and dominant components.

In this case, the court considered that it was clear that the figurative elements of the mark in question would be perceived as an illustration of a castle. In the overall visual assessment of the signs, the difference established between the verbal elements of ‘CASTELLANI’ and ‘CASTELLUCA’ was sufficient to rule out any visual similarity between the competing signs.

Regarding the phonetic comparison, the differences between the signs, due to the differences between the suffixes, were enough to distinguish them aurally in German despite the fact that the prefixes were the same.

With regard to the conceptual comparison, the court considered that the average German consumer was unlikely to associate the two marks in the same way as with the word ‘Kastell’, thus the competing signs were conceptually similar. However, the court also considered that the average German consumer was accustomed to seeing a large number of commercial wine brands whose names had the prefix ‘castel’, which would mean that the average consumer would attach less importance to the prefix and would carefully examine the suffix.

Consequently, the court decided that there was a conceptual difference between the two signs. Consequently, the only plea raised by the applicant had to be upheld and the contested decision annulled.

© RT COOPERS, 2007. This Information Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. Its sole purpose is to highlight general issues. Specialized legal advice should always be sought in relation to particular circumstances.

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