For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 12 October 2004

ORDINARY HUBERT CAN'T BE TAKEN FOR A SAINT, SAYS ECJ


On 20 July the IPKat complained that the Advocate General's Opinion in Case C-106-03 P Vedial v OHIM had not been made available in English. While the Opinion is still available only in Spanish, French, German, Italian and Portuguese, the judgment of the full court has been posted in English. The action was an appeal by Vedial against the dismissal of its opposition to the registration of a word and figurative mark HUBERT, on the basis that (among other grounds) HUBERT was likely to be confused with the earlier national word mark SAINT-HUBERT 41. The ECJ ruled (at paras 53 to 54):

"After making a comparative study ... of the two marks in the visual, aural and conceptual senses, the Court of First Instance concluded ... that the marks could in no way be regarded as identical or similar for the purposes of Article 8(1)(b) of Regulation No 40/94.

Having found that there was no similarity between the earlier mark and the mark applied for, the Court of First Instance correctly concluded that there was no likelihood of confusion, whatever the reputation of the earlier mark and regardless of the degree of identity or similarity of the goods or services concerned".

The IPKat thinks this approach is correct. Where the opposition is really based on the reputation of the earlier mark, the correct ground of challenge should be Article 8(5).

Some famous Huberts here, here and here

1 comment:

Anonymous said...

If similarity is assessed in relation to likelihood of confusion, and there is interdependence between similarity of signs and similarity of goods according to Canon case, how can we say reputation and similarity of goods is an irrelevant factor, just because non-similarity of signs is concluded? Art.8 (5) is in fact based on unjust profit or detriment, but reputation is also useful for determinate whether there is a likelihood of confusion or are two signs similar.

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