Verwarring goederen met diensten
Met gelijktijdige dank aan Marlou van de Braak, Hoyng Monegier LLP.
Merkenrecht. Oppositieprocedure aanvrage gemeenschapsbeeldmerk BAM (aanvrage 2003; metaal, legering, bouwconstructies en reparaties, planning) op basis van ouder Duits beeldmerk BAM (1988; bouwmachines voor wegwerkzaamheden, niet-metalen bouwmaterialen). Relatieve weigeringsgrond: verwarringsgevaar; Klacht is ongegrond omdat er geen sprake is van gelijke producten, zodoende komt men niet toe aan toetsing van de tekens op gelijkheid. Oppositie wordt integraal afgewezen.
Nagezonden: interessant aan het arrest:
1. It was confirmed by the General Court that a request to withdraw a trademark application cannot be taken into account by OHIM if it is not submitted in one of the two languages indicated in the trademark application but in another language.
2. The goods at hand (rigid piping for building, transportable structures, building construction etc.) were not found to be similar to “asphalt and building materials derived from asphalt and for the production of asphalt”, even though there were certain connections between the goods. The General Court followed our reasoning that the goods in question have a different origin and physical condition, that their nature, purpose, composition, methods of production, use and distribution channels are different, and that the relevant public is composed of specialists whose level of attention is high and who will notice those differences.
3. If the Board of Appeal would make an error by erroneously restricting the scope of protection of the earlier mark, that would constitute an infringement of Article 8(1)(b) of Regulation No 207/2009 (incorrect assessment risk of confusion), but not of Article 64(1) (misuse of power).
4. The adversary party had argued that its detailed arguments in relation to the high degree of similarity between the goods and services at issue had not been examined by the Board of Appeal, and that the BoA contravened to state reasons and infringed its rights of defence. The General Court considers that the BoA cannot be required to provide an account which follows exhaustively and one by one all reasoning articulated by the parties before it. The reasoning may therefore be implicit on condition that it enables the persons concerned to know why the decision of the BoA was taken and provides the competent court with sufficient material for it to exercise its review decision. The contested decision in this case is based on matters of law and fact on which the observations of the parties to the appeal proceedings were sufficiently gathered.
In citaten
Taal waarin wordt geregistreerd en aanvraag wordt ingetrokken 23 In that regard, it must be borne in mind that, under Rule 95(a) of Regulation No 2868/95, any application or declaration relating to a Community trade mark application may be filed in the language used for filing the application for a Community trade mark or in the second language indicated by the applicant in his application.
24 It follows from that provision that, to be capable of being taken into consideration by OHIM, the withdrawal of a Community trade mark application must be filed either in the language used for filing the application or in the second language indicated by the applicant in the application.
25 Contrary to what the applicant submits, that finding is not affected by the use in that provision of the verb ‘may’, which is justified here by the choice left to the parties concerned to file their application or declaration in one or other of the two languages permitted.
Niet dezelfde goederen of diensten, aan beoordeling tekens komt men niet toe 61 In addition, it must be borne in mind that, for the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see easyHotel, cited in paragraph 52 above, paragraph 42 and the case-law cited).
62 Since it has been concluded that the goods and services at issue in the present case are not similar, the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected as unfounded, without it being necessary to rule on whether the marks at issue are identical or similar.
