Case T-186/02
BMI Bertollo Srl
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark – Opposition procedure – Earlier DIESEL word marks – Application for Community figurative trade mark DIESELIT – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
Summary of the Judgment
1. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Scope – Distinctive character of the earlier mark – Consideration limited to goods claimed by the trade mark applicant, to the exclusion of any other goods designated by the earlier mark
(Council Regulation No 40/94, Art. 8(1)(b))
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 trade mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Figurative mark ‘DIESELIT’ and word marks ‘DIESEL’
(Council Regulation No 40/94, Art. 8(1)(b))
3. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Absolute grounds for refusal invoked by the trade mark applicant – Exclusion – Possibility of using Community or national annulment proceedings
(Council Regulation No 40/94, Arts 7 and 8(1)(b))
1. In considering an opposition raised by the proprietor of the earlier trade mark under Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the assessment of the extent of the distinctiveness of the earlier mark must be carried out having regard to the goods which form the basis of the opposition, that is to say the goods claimed by the proprietor of the mark. It is unnecessary also to consider other goods claimed by the opponent which belong to the same classes as the goods claimed by the proprietor of the mark.
(see paras 54-55)
2. For the Italian and European public there is a likelihood of confusion between the figurative sign DIESELIT, consisting of the reproduction in printed characters, coloured red, of the word ‘dieselit’, in respect of which registration as a Community trade mark is sought for flat irons, steam irons and ironing boards, covered by Classes 7, 11 and 21 of the Nice Agreement respectively, and the word marks DIESEL, previously registered in Italy as designating all goods and services in Classes 1 to 42 and as a Community trade mark designating all relevant goods in Classes 11, 19, 20 and 21 of that agreement, in that, first, the goods referred to in the application for a Community trade mark are identical or similar to the goods covered by the earlier mark, and secondly, the conflicting signs are sufficiently similar from a visual, phonetic and conceptual point of view that the target public could believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings.
(see paras 43, 48, 51, 58-59)
3. When considering an opposition raised by the proprietor of the earlier mark under Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the trade mark applicant cannot rely on an absolute ground for refusal precluding valid registration of a sign by a national registry or by the Office for Harmonisation of the Internal Market (Trade Marks and Designs). The absolute grounds for refusal contained in Article 7 of Regulation No 40/94 do not fall to be examined as part of the opposition procedure and that article is not one of the provisions in relation to which the legality of the contested decision (against which the opposition has been raised) must be appraised.
If the trade mark applicant is of the view that the earlier trade mark was registered in breach of the provisions of Article 7 of Regulation No 40/94, it must apply for cancellation of the earlier Community trade mark under Article 51 of that regulation, or of the national trade mark in cancellation proceedings brought in the Member State concerned.
(see para. 71)