The scenario of Castellani SpA v Office environment for Harmonisation in the Inner Industry (Trade Marks and Layouts) (OHIM) (Case T-149/06) , anxious an opposition of a European Neighborhood trade mark. On the 25th of September 2001, the applicant submitted an software to sign-up a Local community Trade Mark. The application was designed to the Workplace for Harmonisation in the Inner Industry (Trade Marks and Layouts) (OHIM), and was carried out beneath Council Regulation (EC) No 40/94 (on the Neighborhood Trade Mark).
The applicant sought registration for the figurative mark ‘CASTELLANI’. On the 4th of September 2002, a corporation termed Markant submitted a discover of opposition to registration of the trade mark on the grounds of a earlier registration. The company experienced registered the word ‘CASTELLUCA’.
The opposition referred to all the products covered by the earlier registrations and was directed towards all the items in regard of which registration was sought – the likelihood of confusion on the portion of the general public due to the similarity between the before trade mark and the trade mark sought and the goods in question.
The Opposition Division of OHIM rejected the opposition in its entirety.
After the mark was thought of, it was made a decision that the trade mark applied for and the earlier mark have been visually, as very well as phonetically dissimilar. Furthermore, the applicable general public would not understand any conceptual similarity between the marks in dispute.
The opponent appealed in opposition to this determination to the Opposition Division. The First Board of Enchantment of OHIM annulled this final decision of the Opposition Division and rejected the application for registration, finding that there was a chance of confusion between the trade mark ‘CASTELLANI’ and the previously trade mark ‘CASTELLUCA’. Even so, the applicant appealed, saying that the Court docket of To start with Occasion should really annul the contested selection. The applicant alleged a single plea of infringement of Report 8(1)(b) of Regulation 40/94.
The Court docket held that when building an general assessment of the marks at problem the visual, phonetic, and conceptual variances amongst the conflicting signs were being adequate, inspite of the equivalent nature of the goods included, to preclude the resemblances concerning them offering increase to a probability of confusion on the part of the common German purchaser.
If was resolved that the likelihood of confusion had to be assessed globally. This sort of assessment had to be designed in accordance to the perception of the pertinent community of the indications and the products or companies in issue. On top of that, the evaluation experienced to choose into account all things applicable to the circumstances of the circumstance, in unique, the interdependence of the similarity concerning the indicators and involving the goods and/or solutions selected.
The worldwide assessment of the chance of confusion, as considerably as it anxious the visual, aural or conceptual similarity of the signs in problem, had to be dependent on the over-all impression provided by the signals, having into thought their distinctive and dominant parts.
In this case, the courtroom discovered that it was distinct that the figurative things of the mark in problem would be perceived as an illustration of a castle. In the general visual evaluation of the symptoms, the big difference set up in between the phrase aspects of ‘CASTELLANI’ and ‘CASTELLUCA’ was enough to rule out any visual similarity involving the competing signs.
With regards to the phonetic comparison, the dissimilarities among the symptoms, due to the discrepancies amongst the suffixes, were enough for them to be distinguished aurally in German despite the actuality that the prefixes were the similar.
With regards to the conceptual comparison, the courtroom felt that the normal German client was unlikely to associate the two marks in the very same way as with the term ‘Kastell’, so that the competing signals ended up conceptually similar. Nonetheless, the courtroom also felt that the typical German client was employed to observing a massive variety of trade marks for wine whose names had the prefix ‘castel’ which would indicate that the typical consumer would attach much less importance to the prefix and closely take a look at the suffix.
Appropriately, the court determined that there was a conceptual difference among the two indications. As a consequence, the one plea raised by the applicant experienced to be upheld and the contested selection was annulled.
© RT COOPERS, 2007. This Briefing Be aware does not give a complete or complete assertion of the regulation relating to the concerns talked about nor does it constitute legal advice. It is meant only to emphasize standard challenges. Expert legal suggestions should really normally be sought in relation to particular conditions.