Il Ponte Finanziaria SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

• Jurisdiction: European Union
• Celex Number: 62006CJ0234
• ECLI: ECLI:EU:C:2007:514
• Court: Court of Justice (European Union)
• Date: 13 September 2007
• Procedure Type: Recurso de casación - infundado
• Docket Number: C-234/06

Case C-234/06 P

Il Ponte Finanziaria SpA

v

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

(Appeal – Community trade mark – Registration of the trade mark BAINBRIDGE – Opposition by the proprietor of earlier national trade marks all having the component ‘Bridge’ in common – Opposition rejected – Family of trade marks – Proof of use – Concept of ‘defensive trade marks’)

Opinion of Advocate General Sharpston delivered on 29 March 2007

Judgment of the Court (Fourth Chamber), 13 September 2007

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 identical or similar earlier marks registered for identical or similar goods or services

(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 identical or similar earlier marks registered for identical or similar goods or services

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

3. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark

(Council Regulation No 40/94, Art. 15(2)(a))

4. Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark

(Council Regulation No 40/94, Arts 43(2) and (3), and 56(2))

1. When assessing the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, the assessment of any aural similarity is but one of the relevant factors for the purpose of the global assessment. Therefore, one cannot deduce that there is necessarily a likelihood of confusion where mere phonetic similarity between two signs is established.

(see paras 35-37)

2. Whilst it is true that, in the case of opposition to an application for registration of a Community trade mark based on the existence of only one earlier trade mark that is not yet subject to an obligation of use, the assessment of the likelihood of confusion is to be carried by comparing the two marks as they were registered, the same does not apply where the opposition is based on the existence of several trade marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ or ‘series’ of marks.

Where there is a ‘family’ or ‘series’ of trade marks, the likelihood of confusion results from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for or considers erroneously that that trade mark is part of that family or series of marks.

No consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market.

(see paras 62-64)

3. Whilst it is possible, as a result of Article 15(1) and 2(a) of Regulation No 40/94 on the Community trade mark, to consider a registered trade mark as used where proof is provided of use of that mark in a slightly different form from that in which it was registered, it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former.

(see para. 86)

4. In that regard a proprietor of a national registration who opposes a Community trade mark application cannot, in order to avoid the burden of proof which rests upon him under Article 43(2) and (3) of Regulation No 40/94 on the Community trade mark to prove genuine use of his earlier mark, rely on a national provision which allows the registration, as trade marks, or the existence of proper reasons for its non-use, rely on a national provisions which allows the registration, as trade marks, of signs not intended to be used in trade on account of their purely defensive function in relation to another sign which is being commercially exploited. The concept of ‘proper reasons’ mentioned in Article 43 of Regulation No 40/94 refers essentially to circumstances unconnected with the proprietor of a traded mark which prevent him from using the mark, rather than to national legislation which makes an exception to the rule that a trade mark that has not been used for a period of five years must be revoked, even where such lack of use is intentional on the part of the proprietor of the trade mark. The argument that the holder of a national registration who opposes a Community trade mark application can rely on an earlier trade mark the use of which has not been established on the ground that, under national legislation, that earlier mark constitutes a ‘defensive trade mark’ is therefore incompatible with Article 43(2) and (3) of Regulation No 40/94.

(see paras 100-103)

JUDGMENT OF THE COURT (Fourth Chamber)

13 September 2007 (*)

(Appeal – Community trade mark – Registration of the trade mark BAINBRIDGE – Opposition by the proprietor of earlier national trade marks all having the component ‘Bridge’ in common – Opposition rejected – Family of trade marks – Proof of use – Concept of ‘defensive trade marks’)

In Case C‑234/06 P,

APPEAL under Article 56 of the Statute of the Court of Justice, lodged on 23 May 2006,

Il Ponte Finanziaria SpA, established in Scandicci (Italy), represented by P.L. Roncaglia, A. Torrigiani Malaspina and M. Boletto, avvocati,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by O. Montalto and M. Buffolo, acting as Agents,

defendant at first instance,

F.M.G. Textiles Srl, formerly Marine Enterprise Projects – Società Unipersonale di Alberto Fiorenzi Srl, established in Numana (Italy), represented by D. Marchi, avvocato,

intervener at first instance,

THE COURT (Fourth Chamber),

composed of K. Lenaerts (Rapporteur), President of the Chamber, E. Juhász, R. Silva de Lapuerta, G. Arestis and J. Malenovský, Judges,

Advocate General: E. Sharpston,

Registrar: R. Grass,

having regard to the written procedure,

after hearing the Opinion of the Advocate General at the sitting on 29 March 2007,

gives the following

Judgment

1 By its appeal, Il Ponte Finanziaria SpA (‘the appellant’) asks the Court to set aside the judgment of the Court of First Instance of the European Communities of 23 February 2006 in Case T-194/03 Il Ponte Finanziaria v OHIM – Marine Enterprise Projects(BAINBRIDGE) [2006] ECR II-445 (‘the judgment under appeal’) dismissing its action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 17 March 2003 relating to opposition proceedings between the appellant and Marine Enterprise Projects – Società Unipersonale di Alberto Fiorenzi Srl (‘the contested decision’).

Legal context

2 Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered ‘if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected’. Under Article 8(2)(a)(ii) of that regulation, earlier trade marks are to be understood, inter alia, as trade marks registered in a Member State with a date of application for registration which is earlier than that of the Community trade mark.

3 Article 15(1) of Regulation No 40/94 provides that if, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use. Under Article 15(2)(a) of the regulation, use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered is to constitute use within the meaning of Article 15(1).

4 Article 43(2) of Regulation No 40/94 deals with opposition to an application for registration of a Community trade mark and provides that, if his opposition is not to be rejected, the proprietor of an earlier Community trade mark must furnish proof that, during the five-year period preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. Under Article 43(3) of Regulation No 40/94, paragraph 2 of that article is also to apply to earlier national trade marks by substituting use in the Member State in which the earlier national trade mark is protected...