Case T‑524/11

Volvo Trademark Holding AB

v

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

(Community trade mark — Opposition proceedings — Application for Community figurative mark LOVOL — Earlier Community word and figurative marks and earlier national figurative marks VOLVO — Relative ground for refusal — Unfair advantage taken of the distinctive character or the repute of the earlier trade mark — Article 8(5) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Ninth Chamber), 12 November 2014

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions

(Council Regulation No 207/2009, Art. 8(5))

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Similarity of the marks concerned — Criteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b), and (5))

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Figurative mark LOVOL — Word and figurative marks VOLVO

(Council Regulation No 207/2009, Art. 8(1)(b), and (5))

1.      The types of injury referred to in Article 8(5) of Regulation No 207/2009 on the Community trade mark, where they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them.

The application of Article 8(5) of Regulation No 207/2009 is subject to three conditions, namely, first, the identity of or similarity between the marks at issue; secondly, the existence of a reputation of the earlier trade mark relied on in support of the opposition; and, thirdly, the risk that use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render the provision inapplicable.

(see paras 17, 18)

2.      The criteria to be taken into consideration when assessing the similarity of marks are the same in the case of a refusal to register a mark applied for because of a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark, and in the case of refusal to register that mark because of damage to the reputation of an earlier mark, pursuant to Article 8(5) of Regulation No 207/2009. In those two situations allowing registration of the mark applied for to be refused, the condition relating to similarity between the signs requires the existence, in particular, of elements of visual, aural or conceptual similarity, so that, from the point of view of the relevant public, the marks at issue are at least partially identical as regards one or more relevant aspects. The assessment of the visual, aural or conceptual similarity of the marks at issue must be based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components.

(see paras 21, 22)

3.      See the text of the decision.

(see paras 55-58)