Conceptuele vissengraad
Gerecht EU 29 september 2011, zaak T-415/09 (New Yorker SHK Jeans tegen OHIM / Vallis)
Merkenrecht. Gemeenschapsmerk. Oppositieprocedure tegen aanvrage woordmerk FISHBONE. Ouder Grieks beeldmerk FISHBONE BEACHWEAR. Relatieve weigeringsgrond, gedeeltelijke weigering (voor kleding en schoenen, maar niet voor tassen). Bewijs van normaal gebruik van ouder merk, verwarringsgevaar Extra bewijs wordt overwogen.
Algehele indruk (gebaseerd op visuele, fonetische en conceptuele indrukken) brengt ertoe dat er verwarringsgevaar ontstaat, waarbij moet worden aangetekend dat Board of Appeal er juist aan deed niet conceptueel te vergelijken, zie r.o. 93, omdat merendeel van het publiek het woord "fishbone" niet zal begrijpen.
90 Visually, in the view of the applicant, the figurative element of the earlier mark constituted by the fishbone, the term ‘beachwear’ and the additional graphical elements are not negligible and play a significant role in the overall impression of the earlier mark, which make it different from the mark applied for. In the contested decision, it appears that the Board of Appeal analysed, as regards the earlier mark, both the figurative element representing a fishbone and the word elements ‘fishbone’ and ‘beachwear’. In that regard, it correctly took the view that the figurative element representing a fishbone draws the attention of the relevant public because of its size and that the word element ‘fishbone’ is also important in the context of the visual assessment. Having regard to what is set out in paragraph 63 above, the term ‘beachwear’ being descriptive of the goods in question, the term ‘fishbone’ constitutes the only distinctive word element of the earlier mark and will more strongly draw the attention of the relevant public, who will identify it more easily than the first term. As for the ship’s wheel, although the Board of Appeal merely mentioned it without giving other details, the fact remains that, in essence, it forms part of the overall impression of the figurative mark.
91 It follows from the considerations set out in the previous paragraph that the Board of Appeal was wrong to find that there was a visual similarity between the signs at issue. If account is taken of all those elements, and in particular of the term ‘fishbone’, in the overall impression of the earlier mark, which element is the same as the mark applied for, the conclusion must be that there is only a certain degree of visual similarity between those signs.
92 Phonetically, since the term ‘fishbone’ is the distinctive word element of the mark in question which the relevant public will identify as an indication of the commercial origin of the goods, and since it is the same as the mark applied for, the view must be taken that there is aural similarity between the marks at issue.
93 Finally, as the Board of Appeal correctly held, without being challenged by the applicant, there is no need to assess the conceptual similarity between the signs, given that the meaning of the word ‘fishbone’ will not be understood by the majority of the relevant public.
95 The assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Joined Cases T‑81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74). A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, paragraph 45).
97 In the present case, having regard to the considerations set out in paragraphs 90 to 94 above, which allow the conclusion to be drawn that there is a certain degree of visual similarity and a high degree of phonetic similarity between the marks at issue, which are strengthened by the fact that the goods in question, in Class 25, are identical or similar, the view must be taken that there is a likelihood of confusion between the marks at issue. Even if the relevant public distinguishes the signs at issue, it may nevertheless believe that the goods in question come from the same undertaking or from economically-linked undertakings.
