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Language of document : ECLI:EU:T:2010:399

Case T-292/08

Industria de Diseño Textil (Inditex), SA

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

(Community trade mark – Opposition proceedings – Application for the Community word mark OFTEN – Earlier national word mark OLTEN – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Proof of genuine use of the earlier mark – Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009) – Subject-matter of the dispute before the Board of Appeal – Articles 61 and 62 of Regulation No 40/94 (now Articles 63 and 64 of Regulation No 207/2009))

Summary of the Judgment

1. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Necessity to decide that issue, once raised by the applicant, before the decision on the opposition – Consequence

(Council Regulation No 40/94, Art. 43(2))

2. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – No submission of the plea alleging that the proof of genuine use was insufficient

(Council Regulation No 40/94, Art. 43(2))

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 – One or other of those aspects not expressly disputed

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

4. 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. The issue of the genuine use of the earlier trade mark within the meaning of Article 43(2) of Regulation No 40/94 on the Community trade mark is a preliminary issue which, once raised by the applicant for the trade mark, must be decided before the opposition proper is examined. The request for proof of genuine use by the trade mark applicant adds that preliminary issue to the opposition proceedings and in that sense changes their content, in so far as it constitutes a new, specific claim linked to factual and legal considerations which are separate from those which gave rise to the opposition to the registration of a Community trade mark.

It follows that the issue of genuine use is specific and preliminary in character, since it leads to a determination whether, for the purposes of the examination of the opposition, the earlier trade mark can be deemed to be registered in respect of the goods or services in question, that issue thus not falling within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark.

(see paras 31-33)

2. Where the plea alleging that the proof of genuine use of the earlier mark was insufficient for the purpose of Article 43(2) of Regulation No 40/94 on the Community trade mark is not specifically raised before the Board of Appeal, and therefore also does not constitute a relevant matter for the purposes of the examination of the appeal, that being limited to the examination of the opposition proper, alleging the existence of a likelihood of confusion, that plea does not form part of the subject‑matter of the dispute before the Board of Appeal.

(see paras 39-40)

3. Opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark requires the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to adjudicate on whether the goods and services covered by the marks in question are identical or similar and whether those marks themselves are identical or similar. The fact that one or other of those aspects is not expressly disputed before the Board of Appeal does not divest the Office of the power to adjudicate on that issue. Those considerations are supported by the principle of the interdependence of the factors taken into account in the global assessment of the likelihood of confusion, in particular the assessment of the similarity of the trade marks and that of the goods and services covered.

Therefore, the Board of Appeal, ruling on the appeal which followed the opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, is required to adjudicate on the issue of the similarity of the goods in question, even though that issue has not been expressly raised before it.

(see paras 41-44)

4. There is, for the relevant public consisting of average Spanish consumers, although showing a level of attention higher than the usual, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the word sign OFTEN, registration of which as a Community trade mark is sought for, inter alia, ‘Goods in [precious metals and their alloys] or coated therewith, not included in other classes; jewellery; horological and chronometric instruments; ornamental pins; tie-pins; novelty key rings; medals; badges of precious metal; shoe and hat ornaments of precious metal; cuff links’ falling within Class 14 of the Nice Agreement, and the word mark OLTEN, registered earlier in Spain for, inter alia, ‘watches’, falling within the same class.

(see paras 73-74, 104)