The scenario of Castellani SpA v Office for Harmonisation in the Inside Marketplace (Trade Marks and Patterns) (OHIM) (Situation T-149/06) [2007], anxious an opposition of a European Local community trade mark. On the 25th of September 2001, the applicant filed an application to sign up a Local community Trade Mark. The application was designed to the Business for Harmonisation in the Interior Sector (Trade Marks and Patterns) (OHIM), and was carried out below Council Regulation (EC) No 40/94 (on the Community Trade Mark).
The applicant sought registration for the figurative mark ‘CASTELLANI’. On the 4th of September 2002, a company named Markant filed a detect of opposition to registration of the trade mark on the grounds of a previously registration. The organization experienced registered the phrase ‘CASTELLUCA’.
The opposition referred to all the items protected by the before registrations and was directed from all the goods in respect of which registration was sought – the likelihood of confusion on the component of the public thanks to the similarity concerning the previously trade mark and the trade mark sought and the goods in issue.
The Opposition Division of OHIM turned down the opposition in its entirety.
At the time the mark was thought of, it was made the decision that the trade mark applied for and the before mark have been visually, as effectively as phonetically dissimilar. Moreover, the applicable community would not perceive any conceptual similarity involving the marks in dispute.
The opponent appealed versus this final decision to the Opposition Division. The To start with Board of Attraction of OHIM annulled this choice of the Opposition Division and rejected the software for registration, discovering that there was a chance of confusion between the trade mark ‘CASTELLANI’ and the before trade mark ‘CASTELLUCA’. Even so, the applicant appealed, saying that the Courtroom of To start with Instance need to annul the contested final decision. The applicant alleged a solitary plea of infringement of Posting 8(1)(b) of Regulation 40/94.
The Courtroom held that when creating an in general assessment of the marks at challenge the visual, phonetic, and conceptual variances in between the conflicting signs were being sufficient, in spite of the similar mother nature of the merchandise lined, to preclude the resemblances concerning them offering rise to a likelihood of confusion on the section of the ordinary German consumer.
If was decided that the likelihood of confusion had to be assessed globally. These kinds of evaluation experienced to be produced in accordance to the notion of the pertinent general public of the signs and the products or solutions in dilemma. In addition, the evaluation experienced to take into account all elements relevant to the situation of the case, in specific, the interdependence of the similarity between the signals and among the merchandise and/or companies specified.
The global assessment of the probability of confusion, as considerably as it worried the visible, aural or conceptual similarity of the signs in problem, had to be based mostly on the general perception supplied by the signs, taking into consideration their distinct and dominant components.
In this circumstance, the court docket found that it was crystal clear that the figurative features of the mark in query would be perceived as an illustration of a castle. In the total visual evaluation of the indications, the difference proven amongst the phrase elements of ‘CASTELLANI’ and ‘CASTELLUCA’ was enough to rule out any visual similarity amongst the competing indications.
With regards to the phonetic comparison, the dissimilarities concerning the symptoms, thanks to the variances involving the suffixes, had been enough for them to be distinguished aurally in German inspite of the point that the prefixes ended up the same.
With regards to the conceptual comparison, the court felt that the average German buyer was unlikely to affiliate the two marks in the exact way as with the phrase ‘Kastell’, so that the competing indications had been conceptually comparable. Nonetheless, the courtroom also felt that the regular German shopper was used to looking at a huge amount of trade marks for wine whose names experienced the prefix ‘castel’ which would necessarily mean that the average shopper would attach significantly less significance to the prefix and carefully take a look at the suffix.
Appropriately, the courtroom resolved that there was a conceptual variation involving the two indicators. As a end result, the solitary plea raised by the applicant experienced to be upheld and the contested decision was annulled.
© RT COOPERS, 2007. This Briefing Observe does not give a detailed or entire statement of the law relating to the problems talked over nor does it represent authorized guidance. It is supposed only to highlight typical difficulties. Specialist legal suggestions must often be sought in relation to distinct situations.