Case T‑424/10

Dosenbach-Ochsner AG Schuhe und Sport

v

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

(Community trade mark — Invalidity proceedings — Community figurative mark representing elephants in a rectangle — Earlier international and national figurative marks representing an elephant and earlier national word mark elefanten — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 — Distinctive character of the earlier marks)

Summary of the Judgment

1.      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 207/2009, Art. 8(1)(b))

2.      Community trade mark — Procedural provisions — Examination of the facts by the Office of its own motion — Opposition proceedings — Examination restricted to the facts, evidence and arguments provided by the parties

(Council Regulations No 40/94, Art. 74(1), and No 207/2009, Art. 76(1))

1.      A phonetic comparison is not relevant in the examination of the similarity of a figurative mark lacking word elements with another mark for the purposes of the application of Article 8(1)(b) of Regulation (EC) No 207/2009 on the Community trade mark. A figurative mark lacking word elements cannot, by definition, be pronounced. At the very most, its visual or conceptual content can be described orally. Such a description, however, necessarily coincides with either the visual perception or the conceptual perception of the mark in question. Consequently, it is not necessary to examine separately the phonetic perception of a figurative mark lacking word elements and to compare it with the phonetic perception of other marks.

(see paras 45, 46)

2.      Under both Article 74(1) of Regulation No 40/94 on the Community trade mark and Article 76(1) of Regulation No 207/2009 on the Community trade mark, in proceedings relating to relative grounds for refusal of registration, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

Under those provisions, the Office is required to examine, in its decisions, the merits of a claim relating to the enhanced distinctiveness of the earlier marks acquired through their earlier use, expressly relied on by the applicant for a declaration of invalidity in its written submissions.

On the one hand, the standard form does not contain a section dealing with the distinctiveness of the earlier marks, but only a section dealing with their possible reputation. On the other hand, it follows neither from Regulation No 40/94 nor from Regulation No 207/2009 that, in order to be admissible, the claim that the earlier mark has acquired enhanced distinctiveness must be made when the application for a declaration of invalidity is submitted.

(see paras 58, 61, 62)