The situation of Castellani SpA v Business for Harmonisation in the Inside Industry (Trade Marks and Models) (OHIM) (Scenario T-149/06) [2007], anxious an opposition of a European Community trade mark. On the 25th of September 2001, the applicant filed an software to register a Community Trade Mark. The application was manufactured to the Place of work for Harmonisation in the Internal Market (Trade Marks and Models) (OHIM), and was carried out less than Council Regulation (EC) No 40/94 (on the Group Trade Mark).

The applicant sought registration for the figurative mark ‘CASTELLANI’. On the 4th of September 2002, a organization termed Markant filed a observe of opposition to registration of the trade mark on the grounds of a before registration. The enterprise had registered the term ‘CASTELLUCA’.

The opposition referred to all the goods covered by the earlier registrations and was directed in opposition to all the items in regard of which registration was sought – the chance of confusion on the section of the public thanks to the similarity amongst the earlier trade mark and the trade mark sought and the merchandise in question.

The Opposition Division of OHIM rejected the opposition in its entirety.

Once the mark was considered, it was determined that the trade mark used for and the previously mark ended up visually, as effectively as phonetically dissimilar. Furthermore, the suitable community would not perceive any conceptual similarity in between the marks in dispute.

The opponent appealed towards this final decision to the Opposition Division. The Very first Board of Attractiveness of OHIM annulled this final decision of the Opposition Division and rejected the software for registration, getting that there was a chance of confusion between the trade mark ‘CASTELLANI’ and the previously trade mark ‘CASTELLUCA’. Even so, the applicant appealed, proclaiming that the Court docket of 1st Instance ought to annul the contested conclusion. The applicant alleged a solitary plea of infringement of Posting 8(1)(b) of Regulation 40/94.

The Court docket held that when earning an overall evaluation of the marks at concern the visible, phonetic, and conceptual differences involving the conflicting indicators had been adequate, even with the identical character of the merchandise covered, to preclude the resemblances in between them giving rise to a chance of confusion on the aspect of the regular German shopper.

If was made a decision that the chance of confusion had to be assessed globally. Such assessment had to be created according to the notion of the suitable general public of the signs and the merchandise or solutions in issue. Additionally, the evaluation had to consider into account all variables appropriate to the circumstances of the circumstance, in distinct, the interdependence of the similarity involving the indications and between the products and/or services designated.

The global evaluation of the likelihood of confusion, as much as it involved the visual, aural or conceptual similarity of the signals in dilemma, had to be primarily based on the all round impression supplied by the signs, having into thing to consider their distinctive and dominant parts.

In this circumstance, the courtroom discovered that it was distinct that the figurative things of the mark in dilemma would be perceived as an illustration of a castle. In the over-all visible evaluation of the indicators, the big difference proven concerning the word elements of ‘CASTELLANI’ and ‘CASTELLUCA’ was enough to rule out any visual similarity among the competing indicators.

With regards to the phonetic comparison, the dissimilarities involving the indicators, because of to the discrepancies involving the suffixes, ended up adequate for them to be distinguished aurally in German despite the fact that the prefixes have been the similar.

With regards to the conceptual comparison, the court docket felt that the common German shopper was not likely to associate the two marks in the very same way as with the term ‘Kastell’, so that the competing indicators were conceptually very similar. However, the courtroom also felt that the average German client was used to observing a large variety of trade marks for wine whose names experienced the prefix ‘castel’ which would suggest that the average purchaser would attach less importance to the prefix and closely examine the suffix.

Appropriately, the court docket decided that there was a conceptual change in between the two signals. As a final result, the one plea elevated by the applicant had to be upheld and the contested selection was annulled.

© RT COOPERS, 2007. This Briefing Take note does not offer a complete or full assertion of the law relating to the problems reviewed nor does it constitute legal information. It is supposed only to highlight typical concerns. Specialist lawful advice need to generally be sought in relation to specific situation.