“Only the register is relevant in opposition proceedings” – Dr. Rudolf Böckenholt on the decision of the General Court in GRUR-Prax 6/2024
In the current issue 6/2024 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt explains a decision of the General Court of 20 December 2023 (T-655/22, GRUR-RS 2023, 36614 – WINE TALES RACCONTI DI VINO/WINE TALES) on the question of whether circumstances outside the register are relevant to determine the likelihood of confusion in opposition proceedings.
The court’s answer is a clear: “No!”
The meaning and design of the trade marks’ representation and their planned and actual use play no role in determining whether goods/services are similar. This must be assessed solely on the basis of the information shown on the register. In the original case, it was disputed in particular whether advertising services could be similar to alcoholic beverages, if the trade mark gives rise to the presumption that the advertising services relate to alcoholic beverages.
The court clarifies that products and services can be complementary, but there must be such a close connection between products that one is indispensable or otherwise important for the other. The existence of common points of reference is not sufficient.
The complete article by Dr. Rudolf Böckenholt in German can be found in the printed edition of GRUR-Prax 06/2024. Subscribers to Beck-Online can view it online here.