Case T-103/11

Tiantian Shang

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for the Community figurative mark ‘justing’ – Earlier national figurative mark JUSTING – Seniority of the earlier national mark claimed – Signs not identical – Article 34 of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark – Application for Community mark – Seniority of the earlier national mark claimed – Condition – Identical nature of the sign and the mark – Restrictive interpretation

(Council Regulation No 207/2009, Art. 34(1) and (2))

2.      Community trade mark – Application for Community mark – Seniority of the earlier national mark claimed – Condition – Identical nature of the sign and the mark

(Council Regulation No 207/2009, Art. 34(1))

1.      In order to uphold the claim of seniority of the earlier national mark for the purposes of the application for registration of the Community mark pursuant to Article 34(1) of Regulation No 207/2009 on the Community trade mark, three cumulative conditions must be fulfilled: the earlier national mark and the Community mark applied for must be identical; the goods or services covered by the Community mark applied for must be identical to, or contained within, those covered by the earlier national mark; and the proprietor of the marks at issue must be the same.

The condition that the sign and mark must be identical must be interpreted restrictively because of the consequences attaching to such identity. In the present case, under Article 34(2) of Regulation No 207/2009, the proprietor of the Community mark for which the seniority of the earlier national mark has been recognised will, if he surrenders the earlier mark or allows it to lapse, be able to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.

(see paras 14, 17)

2.      The claim of seniority under Article 34(1) of Regulation No 207/2009 on the Community mark of the figurative national mark JUSTING for the figurative Community mark justing cannot be upheld, since the marks are not identical. The word component ‘justing’ is reproduced in different typographic characters in each mark. In the earlier national mark, the characters used are printing characters in a normal font, whereas, in the Community mark applied for, gothic characters have been used, conferring upon the term ‘justing’ a precise graphic and stylistic characteristic. Furthermore, the figurative components of the two marks are different. In the earlier national mark, on either side of the verbal component, there feature the two symbols representing the two sexes, whereas, in the Community mark applied for, the figurative component, situated above the word component, is a ring surrounded by beams containing the letter ‘j’.

(see paras 21-23)