Case T‑249/11

Sanco, SA

v

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

(Community trade mark — Opposition proceedings — Application for Community figurative mark representing a chicken — Earlier national figurative mark representing a chicken — Relative ground for refusal — Similarity between goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (First Chamber), 14 May 2013

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 — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Criteria

(Council Regulation No 207/2009, Art. 8(1)(b))

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 — Similarity between the goods or services in question — Complementary nature of the goods or services — Perception by the relevant public of the importance of a product or service for the use of another product or service

(Council Regulation No 207/2009, 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 — Assessment of the likelihood of confusion — Determination of the relevant public

(Council Regulation No 207/2009, Art. 8(1)(b))

4.      Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Direction issued to the Office — Exclusion

(Art. 266 TFEU; Council Regulation No 207/2009, Art. 65(6))

5.      Community trade mark — Appeals procedure — Action before the EU judicature — Possibility for the General Court to alter the contested decision — Limits

(Council Regulation No 207/2009, Art. 65(3))

1.      See the text of the decision.

(see paras 16-18, 24)

2.      In assessing the similarity of the goods and services at issue, it is settled case-law that all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned.

Complementary goods and services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. Thus, for the purposes of the assessment of whether the goods and services are complementary, the perception of that public of the importance of a product or service for the use of another product or service should, ultimately, be taken into account.

Therefore, the complementarity between the goods and services in the context of a likelihood of confusion does not rely on the existence of a connection between the goods and services at issue in the mind of the relevant public from the point of view of their nature, their method of use and their distribution channels but on the close connection between those goods and services, in the sense that one is indispensable or important for the use of the other in such a way that the public might think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.

The fact that the method of use of a product or service is unrelated to the method of use of another product or service does not imply in each case that the use of one is not important or indispensable for the use of the other.

(see paras 21, 22, 36, 38)

3.      See the text of the decision.

(see para. 25)

4.      See the text of the decision.

(see para. 65)

5.      See the text of the decision.

(see paras 67, 68)