Case T-361/08

Peek & Cloppenburg and van Graaf GmbH & Co. KG

v

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

(Community trade mark – Opposition proceedings – Application for the figurative Community trade mark Thai Silk – Earlier national figurative trade mark representing a winged creature – Admissibility of the action – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Appeal before the Community judicature – Persons entitled to appeal and to be parties to the proceedings

(Council Regulation No 40/94, Art. 63(4))

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 – Likelihood of confusion with the earlier mark

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

1.      Article 63(4) of Regulation No 40/94 on the Community trade mark provides that an action against a decision of the Board of Appeal is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.

As regards opposition proceedings, the new owners of an earlier trade mark may, in that context, bring an action before the Court and should be accepted as a party to the proceedings once they have proven ownership of the right invoked before the Office for Harmonisation in the Internal Market (Trade Marks and Designs).

Where the new holder of the earlier trade mark has submitted proof of transfer of the mark and the Office has recorded that transfer following the proceedings before the Board of Appeal, he therefore becomes a party to the proceedings before the Office.

(see paras 30-32, 34)

2.      There is no likelihood of confusion for the average German consumer within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the figurative sign Thai Silk, in respect of which registration as Community trade mark was sought for ‘silk’ and ‘clothing, made of silk’ in Classes 24 and 25 of the Nice Agreement, and the earlier figurative trade mark representing a winged creature, which was previously registered in Germany for goods and services in Classes 18, 25 and 35 of that agreement.

The visual and aural differences between the marks at issue are such as to neutralise the weak conceptual similarity. Faced with the two signs at issue, it is completely impossible that the relevant public could establish a link between them giving rise to a likelihood of confusion and causing it to believe that the goods concerned came from the same undertaking or from economically-linked undertakings. Moreover, even if clothing producers do sometimes create a number of lines of goods, it is wholly improbable that the relevant public, faced with the two signs at issue, could believe that they were variants of the same mark or sub‑brands of the same manufacturer.

(see paras 52, 73)