| The case of Castellani SpA v Office for | | | | If was decided that the likelihood of confusion had |
| Harmonisation in the Internal Market (Trade Marks | | | | to be assessed globally. Such assessment had to |
| and Designs) (OHIM) (Case T-149/06) [2007], | | | | be made according to the perception of the |
| concerned an opposition of a European | | | | relevant public of the signs and the goods or |
| Community trade mark. On the 25th of | | | | services in question. Furthermore, the assessment |
| September 2001, the applicant filed an application | | | | had to take into account all factors relevant to |
| to register a Community Trade Mark. The | | | | the circumstances of the case, in particular, the |
| application was made to the Office for | | | | interdependence of the similarity between the |
| Harmonisation in the Internal Market (Trade Marks | | | | signs and between the goods and/or services |
| and Designs) (OHIM), and was carried out under | | | | designated. |
| Council Regulation (EC) No 40/94 (on the | | | | The global assessment of the likelihood of |
| Community Trade Mark). | | | | confusion, as far as it concerned the visual, aural |
| The applicant sought registration for the figurative | | | | or conceptual similarity of the signs in question, |
| mark 'CASTELLANI'. On the 4th of September | | | | had to be based on the overall impression given |
| 2002, a company called Markant filed a notice of | | | | by the signs, taking into consideration their |
| opposition to registration of the trade mark on | | | | distinctive and dominant components. |
| the grounds of a earlier registration. The company | | | | In this case, the court found that it was clear that |
| had registered the word 'CASTELLUCA'. | | | | the figurative elements of the mark in question |
| The opposition referred to all the goods covered | | | | would be perceived as an illustration of a castle. In |
| by the earlier registrations and was directed | | | | the overall visual assessment of the signs, the |
| against all the goods in respect of which | | | | difference established between the word |
| registration was sought - the likelihood of | | | | elements of 'CASTELLANI' and 'CASTELLUCA' |
| confusion on the part of the public due to the | | | | was sufficient to rule out any visual similarity |
| similarity between the earlier trade mark and the | | | | between the competing signs. |
| trade mark sought and the goods in question. | | | | With regards to the phonetic comparison, the |
| The Opposition Division of OHIM rejected the | | | | dissimilarities between the signs, due to the |
| opposition in its entirety. | | | | differences between the suffixes, were sufficient |
| Once the mark was considered, it was decided | | | | for them to be distinguished aurally in German |
| that the trade mark applied for and the earlier | | | | despite the fact that the prefixes were the same. |
| mark were visually, as well as phonetically | | | | With regards to the conceptual comparison, the |
| dissimilar. Furthermore, the relevant public would | | | | court felt that the average German consumer |
| not perceive any conceptual similarity between | | | | was unlikely to associate the two marks in the |
| the marks in dispute. | | | | same way as with the word 'Kastell', so that the |
| The opponent appealed against this decision to the | | | | competing signs were conceptually similar. |
| Opposition Division. The First Board of Appeal of | | | | However, the court also felt that the average |
| OHIM annulled this decision of the Opposition | | | | German consumer was used to seeing a large |
| Division and rejected the application for | | | | number of trade marks for wine whose names |
| registration, finding that there was a likelihood of | | | | had the prefix 'castel' which would mean that the |
| confusion between the trade mark 'CASTELLANI' | | | | average consumer would attach less significance |
| and the earlier trade mark 'CASTELLUCA'. | | | | to the prefix and closely examine the suffix. |
| However, the applicant appealed, claiming that the | | | | Accordingly, the court decided that there was a |
| Court of First Instance should annul the contested | | | | conceptual difference between the two signs. As |
| decision. The applicant alleged a single plea of | | | | a result, the single plea raised by the applicant had |
| infringement of Article 8(1)(b) of Regulation 40 | | | | to be upheld and the contested decision was |
| 94. | | | | annulled. |
| The Court held that when making an overall | | | | © RT COOPERS, 2007. This Briefing Note |
| assessment of the marks at issue the visual, | | | | does not provide a comprehensive or complete |
| phonetic, and conceptual differences between the | | | | statement of the law relating to the issues |
| conflicting signs were sufficient, despite the | | | | discussed nor does it constitute legal advice. It is |
| identical nature of the goods covered, to preclude | | | | intended only to highlight general issues. Specialist |
| the resemblances between them giving rise to a | | | | legal advice should always be sought in relation to |
| likelihood of confusion on the part of the average | | | | particular circumstances. |
| German consumer. | | | | |