Case T-150/04

Mülhens GmbH & Co. KG

v

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

(Community trade mark – Opposition procedure – Application for figurative Community trade mark TOSCA BLU – Earlier national word mark TOSCA – Relative grounds for refusal – Well-known trade mark within the meaning of Article 6 bis of the Paris Convention – Article 8(1)(b) of Regulation (EC) No 40/94 – Article 8(5) of Regulation No 40/94)

Summary of the Judgment

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

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

(Council Regulation No 40/94, 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 well known in a Member State

(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 enjoying a reputation

(Council Regulation No 40/94, Art. 8(5))

1.      It is clear from Article 8(1)(b) of Regulation No 40/94 on the Community trade mark that a likelihood of confusion between two identical or similar marks can exist only within the limits of the principle of speciality, that is to say, where, regardless of the distinctive character which the earlier mark enjoys as a result of the awareness which the relevant public may have of it, the goods or services at issue are identical or similar in the eyes of that relevant public.

(see para. 34)

2.      In assessing similarity between the goods or services in question within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, all the relevant factors relating to the way in which those goods or services are connected should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary.

Perfumery products, in themselves, cannot be regarded as similar to leather goods within Class 18 of the Nice Agreement and clothing within Class 25 of that agreement. They are clearly different from leather goods and clothing both as regards their nature, their purpose and their method of use. There is nothing, either, that enables them to be regarded as in competition with each other or complementary.

Nevertheless, it cannot be ruled out, particularly in the fashion and body and facial care sectors, that goods whose nature, purpose and method of use are different, quite apart from being functionally complementary, may be aesthetically complementary in the eyes of the relevant public.

However, such aesthetic complementarity, which must involve a genuine aesthetic necessity, in that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use these products together, is not enough to establish similarity, for the purposes of Article 8(1)(b) of Regulation No 40/94, between those goods. For that, the consumers must consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same.

The fact that the public is accustomed to fashion industry products being marketed under perfume trade marks cannot establish the existence of an aesthetically complementary connection between perfumery products on the one hand and leather goods and clothing on the other, so as to mean that one is indispensable or important for the use of the other and that consumers consider it ordinary and natural to use those goods together.

(see paras 29, 31-32, 35-38)

3.      There is no likelihood of confusion between the figurative mark TOSCA BLU, registration of which as a Community trade mark is applied for in respect of leather goods and clothing falling, respectively, within Classes 18 and 25 of the Nice Agreement, and the word mark TOSCA, an unregistered mark allegedly well known in Germany for ‘perfume, eau de toilette, eau de Cologne, body lotions, toilet soaps, shower gel, etc.’, since perfumery products cannot be regarded as similar to leather goods in Class 18 and clothing in Class 25.

(see paras 31-32)

4.      It follows from Article 8(5) of Regulation No 40/94 on the Community trade mark, which uses the expression ‘for which the earlier trade mark is registered’, that that provision applies to earlier marks within the meaning of Article 8(2) of that regulation only in so far as they have been registered.

Consequently, in contrast to Article 8(1)(b) of Regulation No 40/94 which allows, as regards identical or similar goods or services, opposition based on marks for which no proof of registration has been provided, but which are well known within the meaning of Article 6 bis of the Paris Convention, Article 8(5) of Regulation No 40/94 protects, in relation to goods or services which are not similar, only those well-known marks within the meaning of Article 6 bis of the Paris Convention for which proof of registration has been provided.

The exclusion of well-known marks for which registration has not been proved, from the scope of Article 8(5) of Regulation No 40/94 is in keeping with Article 6 bis of the Paris Convention, which, since it is only applicable within the limits of the principle of speciality, provides no protection for different goods.

(see paras 55-57)