Case T-84/08

Intesa Sanpaolo SpA

v

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

(Community trade mark – Opposition proceedings – Application for Community word mark COMIT – Earlier national figurative mark Comet – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Article 8(3) of Regulation (EC) No 216/96)

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Appeal to a Board of Appeal – Challenge to the contested decision by the defendant in its observations

(Commission Regulation No 216/96, Art. 8(3))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

1.      It is apparent from the wording of Article 8(3) of Regulation No 216/96, laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), as amended, that, in the context of proceedings before the Board of Appeal, the defendant may, in its submissions, exercise its right to challenge the decision that is contested. Thus, simply by virtue of its status as a defendant, it is allowed to challenge the validity of the Opposition Division’s decision. Nor does Article 8(3) of Regulation No 216/96 limit that right to the pleas in law already raised in the appeal: it provides, in fact, that the submissions are to relate to a point not raised in the appeal. Moreover, that provision does not make any reference to the fact that the defendant could itself have brought an appeal against the contested decision. Both remedies are available for challenging the decision upholding an opposition and refusing an application for registration of a Community trade mark.

(see para. 23)

2.      In the context of examining an opposition brought by the proprietor of the earlier trade mark, under Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, there is nothing to prevent a finding that a word mark and a figurative mark are visually similar, since both types of mark have a graphic form which is capable of creating a visual impression.

(see para. 37)

3.      For the average German consumer, there exists a likelihood of confusion between the word sign COMIT, in respect of which registration as a Community trade mark is applied for services in Classes 35, 36, 41 and 42 of the Nice Agreement, and the figurative mark Comet registered earlier in Germany for identical services.

Because of the strong similarities between the signs at issue, in particular the visual and phonetic similarities, and the established fact that the services at issue are identical, it is likely that the public will confuse the marks at issue, given that the consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Accordingly, notwithstanding the fact that there is a certain conceptual difference and irrespective of the level of attention of the average German consumer, there is a likelihood that that public might think that the services at issue come from the same undertaking or, as the case may be, from economically linked undertakings.

(see paras 33-34, 45-47)