Case T-385/03

Miles Handelsgesellschaft International mbH

v

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

(Community trade mark – Opposition proceedings – Application for a Community figurative mark containing the verbal element ‘Biker Miles’ – Earlier Community word mark MILES – 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 – Likelihood of confusion with the earlier mark – Figurative mark containing the verbal element ‘Biker Miles’ and word mark MILES

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

There is, for the average consumer in the European Union, a likelihood of confusion between the figurative sign made up of two words written in bold, ‘biker’ and ‘miles’, as well as figurative elements, in particular the image of a road with a circle round it, for which registration as a Community trade mark has been applied in respect of ‘equipment and clothing for riders of two-wheeled vehicles, namely boots, shoes, gloves, scarves, rainwear, weather protection clothing, pullovers, helmets, kidney protectors, leather clothing, imitation leather clothing’ in Class 25 of the Nice Agreement, and the word mark MILES registered previously as a Community trade mark for ‘clothing, including sportswear’ in the same class, because, first, the goods at issue are identical, those in respect of which registration is sought being included in the category of goods covered by the earlier mark and, secondly, the conflicting signs are similar as the figurative elements do not, from a visual point of view, occupy a position equivalent to that of the verbal elements and, in respect of the latter, the verbal element ‘miles’, which is identical to the earlier mark, must be considered to be the dominant element of the mark applied for and the verbal element ‘biker’, even though it adds a certain nuance, is not of importance on a conceptual level.

(see paras 26, 37, 42, 45, 48, 53)