Il Ponte Finanziaria SpA v OHIM

Report Headline
The European Court of Justice ("ECJ") finds that a "family" of Italian-registered trade marks containing the word BRIDGE may not be relied on to stop the figurative mark BAINBRIDGE from being registered as a Community Trade Mark ("CTM").

The Parties
Il Ponte Finanziaria SpA v OHIM

The Citation
C – 234/06 P

The Tribunal
The European Court of Justice.

The Context
According to Article 8(1)(b) of the Community Trade Mark Regulation – 40/94/EC (the "Regulation") a trade mark shall not be registered if, following opposition by the owner of an earlier mark, the owner of the earlier mark is able to show its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks. The owner of the earlier mark should also show a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is registered.

When assessing likelihood of confusion it should be considered globally, ie. having regard to conceptual, aural and visual similarities between the two marks which global appreciation is asserted by the overall impression that each mark gives to the average consumer of the goods or services for which the marks are applied.

The Facts
Marine Enterprise Projects (later, FMG Textiles Srl) (the "Applicant") sought to register as a Community Trade Mark ("CTM") the figurative mark which was made up of the word BAINBRIDGE and the image of the sail of a boat being unfurled, in respect of goods in classes 18 and 25. Il Ponte Finanziaria SpA (the "Opposer") sought to rely on its 11 earlier Italian trade marks, all of which contained the word BRIDGE (a so-called "family" of marks), to suggest that there was a likelihood of confusion between the two marks.

The Decision
The Opposer's arguments were as follows:

(i) it sought to argue that there being no visual similarity between trade marks, aural similarity should prevail;
(ii) the Court of First Instance ("CFI") had erred in its assumption that the majority of consumers in Italy would have an understanding of the word "bridge" and
(iii) the CFI had failed to appreciate the identical nature of the goods in respect of which each mark was registered which, it argued, when combined with the distinctive character of its earlier trade marks would mean that a lesser degree of similarity between the marks sufficed to result in a finding of the likelihood of confusion.
The ECJ dismissed each of these arguments by saying that:
(i) aural similarity was merely one factor to be taken into account when making a global assessment of similarity;
(ii) the observation relating to the understanding of English amongst Italians was inadmissible given that it was based in fact rather than law; and
(iii) the ECJ said that the CFI's finding of fact in relation to the similarity of marks was conducted properly.
The Opposer went on to argue that when assessing the likelihood of confusion the CFI ought to have considered its "family" of trade marks even though certain of them had not been used within the necessary five year period from the date of registration. The ECJ considered this point and stated that the only relevance of a "family" of trade marks showing the common element BRIDGE was the extent to which (if any) they influence the relevant public when it considers the marks: in other words, whether the public might be more inclined to associate the common element with the owner of the earlier rights.

The ECJ found that the marks which had never been used on the market could not play any part in this analysis. Furthermore, the CFI was entitled to disregard those marks which were the subject of defensive applications and had therefore not been put to genuine use, a requirement of Article 15(2)(a) of the Regulation.
Therefore, the appeal failed.

Comment
Although the ECJ's analysis of the global appreciation of the trade marks followed existing practice in this area, this case is particularly interesting for the attempt by the Opposer to rely on a "family" of trade marks. In other words, the registration of a variety of trade mark as registered trade marks in their own right necessarily excludes each variant from being able to rely on Article 15(2)(a) of the Regulation. In summary, a "family" of marks sharing a common element cannot be relied upon by an Opposer unless that Opposer has used each mark sufficiently so as to create a high degree of awareness of the common element or elements of that family amongst the relevant public.