23.10.2004   

EN

Official Journal of the European Union

C 262/21

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annul the judgment delivered on 22 June 2004 by the Court of First Instance of the European Communities in Case T-185/02; (1)

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annul the decision of the Third Board of Appeal of OHIM of 18 March 2002 in Case R 247/2001-3 in so far as the opposition entered by the appellant against the application lodged by the trade mark applicant for registration of the word mark PICARO as a Community trade mark was rejected;

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order OHIM to bear its own costs and to pay those incurred by the appellant both at first instance and in the appeal proceedings.

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The appeal is brought on the ground of misapplication of the term ‘likelihood of confusion’.

In the judgment under appeal, the Court of First Instance laid down a rule according to which conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned. According to the Court of First Instance, for there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately.

For the purpose of establishing whether visual and phonetic similarities are counteracted by the conceptual differences, it is irrelevant that the sign has a meaning which can be grasped by the public immediately. The degree of visual, phonetic and conceptual similarity must be determined in the light of the categories of goods in question and of the circumstances in which those goods are marketed.

Moreover, the meaning or reputation of the name Picasso, divorced from the goods in respect of which that trade mark was registered, cannot be used as an argument to support the claim that there are conceptual differences and that, as a result of such a meaning or reputation, the conceptual differences cancel out the phonetic and visual similarities.

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The appeal is brought on the ground of misapplication of the term ‘likelihood of confusion’ and, in particular, the rule that the greater the degree of inherent distinctiveness or distinctiveness resulting from the reputation of the mark the greater the protection must be.

Whilst the Court of First Instance referred to that rule, it failed to ascertain whether the mark PICASSO is per se or inherently distinctive, which, in the appellants' view, is indeed the case.

The judgment under appeal is wrongly based on the premiss that, when assessing the likelihood of confusion, account need be taken solely of the degree of attention at the time when the consumer considers whether and then chooses to purchase a particular product. However, it is a generally recognised principle of trade mark law that the proprietor of a trade mark is to be protected against potential confusion both before and after the purchase of his product.

Moreover, the Court of First Instance wrongly held that, when ascertaining in opposition proceedings whether there is a likelihood of confusion, there is no need to take account of the possibility of post-sale confusion. That applies only in cases of infringement such as that in the Arsenal case.