Case T‑350/13

Jordi Nogues, SL

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU figurative mark BADTORO — Earlier EU word and national figurative marks TORO — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Similarity of the goods and services — Article 8(1)(b) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Seventh Chamber), 20 September 2017

1.      EU trade mark — Definition and acquisition of the EU 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 –Figurative mark BADTORO and word and figurative marks TORO

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

2.      EU trade mark — Definition and acquisition of the EU 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 of the marks concerned — Criteria for assessment — Composite mark

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

3.      EU trade mark — Definition and acquisition of the EU 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 of the marks concerned — Visual similarity between a figurative mark and a word mark

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

4.      EU trade mark — Definition and acquisition of the EU 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 of the marks concerned — Criteria for assessment — Composite mark – Element common to two marks having an independent distinctive role in the earlier mark

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

1.      See the text of the decision.

(see paras 19-21, 68-70)

2.      The global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark.

(see paras 23, 24)

3.      Although, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter because the average consumer will more easily refer to the goods in question by quoting the name of the mark than by describing its figurative element, it does not follow that the word elements of a mark must always be regarded as more distinctive than the figurative elements. In the case of a composite mark, the figurative element may rank equally with the word element. It is therefore appropriate to examine the intrinsic qualities of the figurative element and of the word element of the contested mark as well as the respective positions of those elements, in order to identify the dominant component.

(see para. 29)

4.      Even if an element common to the signs at issue cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those signs, to the extent that it constitutes in itself the earlier mark and retains an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element still has an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

The purpose of examining whether any of the components of a composite sign has an independent distinctive role is thus to determine which of those components will be perceived by the relevant public.

In that connection, the Court of Justice has stated that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately.

(see paras 32-34)