Case T-563/08

CM Capital Markets Holding, SA

v

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

(Community trade mark – Opposition proceedings – Application for Community word mark CARBON CAPITAL MARKETS – Earlier Community and national figurative marks CM Capital Markets – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

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

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

There is, for the relevant public consisting of consumers throughout the whole Community who are very attentive, well informed and familiar with basic English financial terminology, no 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 CARBON CAPITAL MARKETS, in respect of which registration as a Community trade mark is sought for ‘[f]inancial services; commodity trading; commodities brokerage; commodities finance; commodities investment services; services relating to the trading of commodities; provision of pricing information of commodities; capital investments; investment services; services relating to emissions allowance trading; options trading; trading in emissions allowances; trading in equities; trading in stocks; commodities brokerage; risk management services; financing of acquisitions; information, advisory and consultancy services relating to emissions trading’ falling within Class 36 of the Nice Agreement, and the figurative marks CM Capital Markets registered earlier as a Community trade mark for services in Classes 35, 36 and 42, and in Spain for services in Class 36.

Since the services falling in particular within Class 36 of the Nice Agreement that are covered by the earlier marks include the same range of financial sector services as those covered by the trade mark applied for and falling within the same class, the services at issue are identical. By contrast, the signs at issue are different. In the overall impression conveyed by the signs at issue, the visual and conceptual differences between the signs are sufficient to outweigh their limited phonetic similarity, particularly since, in the present case, the relevant public is highly attentive and well informed. Bearing in mind the lack of similarity of the signs at issue, in spite of the services covered being identical, there is no likelihood of direct confusion between the trade mark applied for and the earlier marks.

(see paras 33-34, 61, 64)