Decision Nº O/476/14 from Intellectual Property Office - (Trade market), 3 November 2014
| Judge | Professor Ruth Annand |
| Registration Number | UK00002632956 |
| Date | 03 November 2014 |
| Administrative Decision Number | O/476/14 |
| Court | Intellectual Property Office (United Kingdom) |
O-476-14
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION No. 2632956
IN THE NAME OF R2 PETS LIMITED
AND IN THE MATTER OF OPPOSITION No. 104285 THERETO
BY SOCIÉTÉ DES PRODUITS NESTLÉ SA
AND IN THE MATTER OF AN APPEAL TO THE APPOINTED PERSON
BY THE OPPONENT
AGAINST A DECISION OF MR M BOYLE
DATED 5 DECEMBER 2013
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DECISION
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Introduction
1. This is an appeal involving the correct comparison of marks in the global assessment
of likelihood of confusion under Section 5(2)(b) of the Trade Marks Act 1994, where
a composite trade mark is applied for which contains an identical or allegedly similar
component to that of which an earlier trade mark is comprised.
2. The Court of Justice of the European Union (“CJEU”) recently set out its accumulated
guidance on this issue1 in Bimbo SA v. OHIM, 8 May 2014 (emphasis added):
“19. … according to settled case-law, the risk that the public might believe
that the goods or services in question come from the same undertaking or, as
the case may be, from economically-linked undertakings, constitutes a
likelihood of confusion … (see Case C‑334/05 P OHIM v Shaker
EU:C:2007:333, paragraph 33, and Case C‑193/06 P Nestlé v OHIM
EU:C:2007:539, paragraph 32).
20. The existence of a likelihood of confusion on the part of the public must
be assessed globally, account being taken of all factors relevant to the
circumstances of the case (see, to that effect, Case C‑251/95 SABEL
EU:C:1997:528, paragraph 22; OHIM v Shaker … paragraph 34; and Nestlé v
OHIM … paragraph 33).
21. The global assessment of the likelihood of confusion, in relation to the
visual, aural or conceptual similarity of the marks at issue, must be based on
the overall impression given by the marks, account being taken, in particular,
of their distinctive and dominant components. The perception of the marks by
1 In the context of Article 8(1)(b) of Regulation (EC) No 40/94 (now Regulation (EC) No 207/2009) which is
the equivalent under the CTM system to Section 5(2)(b) of the Act.
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