From the European Court of Justice today: Part 1

Today's Community trade mark decisions are now available on the Curia website. They include ...

Case C-334/05 P Office for Harmonisation in the Internal Market v Shaker di L. Laudato & C. Sas; Limiñana y Botella, SL: for background see earlier IPKat posts here and here. LIMONCELO figurative mark appeal allowed because the Court of First Instance failed to make a global comparison of the conflicting marks; case remitted to the Court of First Instance for further consideration. Said the Court:
"37 ... the Court of First Instance ... noted the case-law ... according to which the global appreciation of the likelihood of confusion must be based on the overall impression created by the signs at issue.

38 However, it stated ... that, if the trade mark claimed was a complex mark which was visual in nature, the assessment of the overall impression created by that mark and the determination as to whether there was a dominant element had to be carried out on the basis of a visual analysis. It added that, in such a case, it was only to the extent to which a potentially dominant element included non-visual semantic aspects that it might become necessary to compare that element with the earlier mark, also taking into account those other semantic aspects, such as for example phonetic factors or relevant abstract concepts.

39 On the basis of those considerations, the Court of First Instance, in the context of the analysis of the signs at issue, firstly held that the mark for which registration was sought contained a dominant element comprising the representation of a round dish decorated with lemons. It then inferred ... that it was not necessary to examine the phonetic or conceptual features of the other elements of that mark. It finally concluded ... that the dominance of the figurative representation of a round dish decorated with lemons in comparison with the other components of the mark prevented any likelihood of confusion arising from the visual, phonetic or conceptual similarities between the words ‘limonchelo’ and ‘limoncello’ which appear in the marks at issue.

40 However, in so doing, the Court of First Instance did not carry out a global assessment of the likelihood of confusion of the marks at issue.

41 It is important to note that, according to the case-law of the Court, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see order in Matratzen Concord v OHIM, paragraph 32; Medion, paragraph 29).

42 As the Advocate General pointed out ..., it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.

43 It follows that the Court of First Instance incorrectly applied Article 8(1)(b) of Regulation No 40/94".

Case T-105/05 Assembled Investments (Proprietary) v OHIM - Waterford Wedgwood (WATERFORD STELLENBOSCH): an application to register a sign containing the words WATERFORD STELLENBOSCH for wines was opposed by the owner of the earlier mark WATERFORD for glassware and chinaware on Article 8(1)(a) and (b) and Article 8(5) grounds. The Opposition Division held the marks dissimilar and refused the opposition without considering the Article 8(5) ground; the Board of Appeal disagreed, considered that a likelihood of confusion existed and allowed the opposition. The CFI, allowing the applicant's appeal, ruled that there was no likelhood of confusion since the parties' respective goods were neither similar nor sufficiently complementary. The opposition was however remitted for further consideration of the Article 8(5) ground.

The IPKat reserves the right to comment on these cases once he's had long enough to think about them.
From the European Court of Justice today: Part 1 From the European Court of Justice today: Part 1 Reviewed by Jeremy on Tuesday, June 12, 2007 Rating: 5


  1. Since when has the Kat felt the need to 'reserve the right to comment' ? Its our God given duty to comment.

    Both decisions look fine to me.

    In Limoncello, the ECJ had to give the CFI a thorough slap on the wrist for making a total dog's breakfast of 'global assessment'.

    In Waterford, well, are wines and decanters really 'complementary' goods in trade. I think not m'lud.

  2. I agree with the previous commentator that the CFI made a dog's breakfast of the comparison between the marks in Limoncello. But the ECJ decision is a disgrace for a different reason. This litigation has now progressed through FOUR instances of the European trade mark system and STILL there is no final decision. The trade mark application was filed on 20.10.99 -getting on for 8 years ago. This is delay on a scale similar to that of the EPO in its worst cases. The ECJ should have decided whether or not the application should be accepted once and for all rather than passing the buck back to CFI.


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