Complementarity of the goods autonomous criterion

C-50/15 P

Kurt Hesse v EUIPO

Trade marks: Scope of protection

21 Jan 2016

The matter at hand

In an opposition filed against the registration of the word mark CARRERA for mobile navigation apparatus on the basis of Porsche’s identical trade mark CARRERA for cars, both the Board of Appeal and the General Court had held that the complementary nature of the goods concerned was sufficient for a finding of similarity of the goods.

The applicant, Mr. Hesse, appealed this finding, arguing that the assessment of the similarity of the goods may not be based on their complementary nature alone, but must be based on an analysis of all the relevant factors relating to the goods at issue including, in this case, the origin, marketing, distribution channels and the respective points of sale of those goods. In Mr. Hesse’s view, the General Court would not have found there to be similarity of the goods if it had taken these factors into account as well.

The judgment of the ECJ

In line with steady case law, most notably the ECJ’s landmark decision in Canon/Cannon (Case C-39/97), the ECJ first of all recalls that in assessing the similarity of goods or services, all the relevant factors relating to those goods or services should be taken into account including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (paragraph 21).

The ECJ, however, continues that “although the complementary nature of the goods at issue represents only one factor amongst several others (…) in the light of which the similarity of the goods can be assessed, the fact remains that it is an autonomous criterion capable of being the sole basis for the existence of such a similarity” (paragraph 23).

Accordingly, the ECJ concludes that “the General Court did not err in law by upholding the assessment of the Board of Appeal according to which the goods at issue were similar because of their complementarity, without carrying out, to that end, an analysis of the origin, the marketing, the distribution channels or the points of sale of those goods” (paragraph 25).

Commentary

This decision makes clear that a finding of similarity between the goods in question may result from one of the relevant factors to be taken into account only. Although some consider this a departure from the ECJ’s landmark decision in Canon/Cannon (Case C-39/97), the decision does seem in line with steady ECJ case law regarding the other precondition of Article 8(1)(b) of Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (the similarity of the marks) according to which a minimum degree of similarity suffices to meet this precondition (see for example Ferrero, C-552/09 P and Calvin Klein, C-254/09). The decision in the present case confirms that the same applies to the similarity of the goods. On the other hand, the fact that the similarity of the goods results from one factor only, whereas the goods are different in the other factors, does play a role in assessing whether there exists a likelihood of confusion and may still negatively impact that assessment.