Matter of Castellani SpA v. Office for Harmonization in the Internal Market (Trademarks, Designs and Models) (OHIM) (Case T-149/06) [2007], concerned an opposition to a trade mark from the European Community. On September 25, 2001, the applicant filed an application for the registration of a Community Trademark. The application was filed with the Office for Harmonization in the Internal Market (Trademarks, Designs and Models) (OHIM), and was carried out in accordance with Council Regulation (EC) No. 40/94 (on Community Trademarks).
The plaintiff requested the registration of the figurative mark ‘CASTELLANI’. On September 4, 2002, a company called Markant submitted a writ of opposition to the registration of the trademark due to a previous registration. The company had registered the word ‘CASTELLUCA’.
The opposition concerned all the products that were the subject of the earlier registrations and was directed against all the products for which registration was requested – risk of confusion for the public due to the similarity between the earlier mark and the sought mark and the goods in question.
The OHIM Opposition Division dismissed the opposition in its entirety.
Once the mark was considered, it was decided that the mark applied for and the earlier mark were visually, as well as phonetically, different. Furthermore, the relevant public would not perceive any conceptual similarity between the disputed marks.
The opponent appealed this resolution before the Opposition Division. The First Board of Appeal of the OHIM annulled this decision of the Opposition Division and rejected the registration application on the grounds that there was a risk of confusion between the mark “CASTELLANI” and the earlier mark “CASTELLUCA”. However, the plaintiff filed an appeal, requesting the Court of First Instance to annul the contested decision. The applicant raised a single ground of infringement of Article 8(1)(b) of Regulation 40/94.
The Court of Justice held that, when making a global assessment of the conflicting marks, the visual, phonetic and conceptual differences between the conflicting signs were sufficient, despite the identical nature of the designated goods, to exclude that the similarities between they would give rise to a likelihood of confusion on the part of the average German consumer.
It was decided that the likelihood of confusion should be assessed globally. That assessment had to be made based on the perception that the relevant public had of the signs and the goods or services in question. In addition, the assessment had to take into account all factors relevant to the circumstances of the case, in particular, the interdependence of the similarity between the signs and between the goods and/or services designated.
The overall assessment of the likelihood of confusion, as regards the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression produced by the signs, taking into account their distinctive and dominant components.
In this case, the court found that it was clear that the figurative elements of the mark in question would be perceived as an illustration of a castle. In the overall visual appreciation of the signs, the difference established between the word elements ‘CASTELLANI’ and ‘CASTELLUCA’ was sufficient to rule out any visual similarity between the competing signs.
Regarding the phonetic comparison, the differences between the signs, due to the differences between the suffixes, were enough to distinguish them aurally in German despite the fact that the prefixes were the same.
With regard to the conceptual comparison, the court considered that the average German consumer was unlikely to associate the two marks in the same way as with the word ‘Kastell’, therefore the competing signs were conceptually similar. However, the court also considered that the average German consumer was used to seeing a large number of wine brands with names prefixed with ‘castel’, which would mean that the average consumer would give less importance to the prefix and would carefully examine the suffix .
Consequently, the court decided that there was a conceptual difference between the two signs. As a result, the sole reason invoked by the applicant had to be upheld and the contested decision annulled.
© RT COOPERS, 2007. This Information Note does not provide a comprehensive or complete statement of the law relating to the subjects discussed nor does it constitute legal advice. Its sole purpose is to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.