Joined Cases T‑81/03, T‑82/03 and T‑103/03

Mast-Jägermeister AG

v

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

(Community trade mark − Opposition proceedings – Applications for Community figurative marks VENADO with frame, VENADO and VENADO ESPECIAL − Earlier Community figurative marks representing a deer’s head facing forward in a circle – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)

Summary of the Judgment

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)

For average Spanish consumers, there is a likelihood of confusion between, on the one hand, the figurative marks VENADO with frame, VENADO and VENADO ESPECIAL including the representation of a deer’s head facing forward in a circle, registration of which as Community trade marks is applied for in respect of ‘Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ and ‘Rum, rum liqueurs and aguardientes’ within Classes 32 and 33 respectively of the Nice Agreement, and, on the other hand, the figurative mark representing a deer’s head facing forward in a circle, previously registered as a Community trade mark in respect of ‘Non-alcoholic beverages’ and ‘Wines, sparkling wines, fruit wines, fruit sparkling wines, spirits’ within the same Classes of that Agreement.

Given that the goods concerned are to a large extent identical and very similar as to the remainder, and in view of the visual, phonetic and conceptual similarities between the conflicting marks, the differences between them are not sufficient to eliminate the existence of a likelihood of confusion on the part of that relevant public. In particular, the visual differences between the signs are not in themselves sufficient to eliminate any likelihood of confusion on the part of that public. In the first place, given that the average consumer retains only an imperfect image of the mark in his mind, it cannot be considered that he would be able to recall figurative details of the signs in question. Moreover, the word elements (‘venado’, ‘venado especial’) appearing only in the marks applied for will be understood by the average Spanish-speaking consumer as a direct reference to the figurative part of those marks. Secondly, and above all, the visual differences between the marks are offset by the identity of many of the goods concerned and the similarity of the other goods concerned and by the phonetic and conceptual similarity of those marks for the relevant Spanish-speaking public

(see paras 101-103, 107-108)