The matter at hand

Spanish company The English Cut applied for registration of THE ENGLISH CUT as a CTM for inter alia clothing. El Corte Inglés filed opposition against this registration on grounds of its trade marks for EL CORTE INGLÉS, which are used for its departments stores. 'El Corte Inglés' is Spanish for 'The English Cut'. El Corte Inglés invoked both Article 8(1)(b) (i.e. risk of confusion) and Article 8(5) (i.e. unfair advantage and/or detriment) of the Trade Mark Regulation.

The opposition was rejected by the OHIM. In the appeal brought before it, the General Court considered that there was a low degree of conceptual similarity and an absence of visual and phonetic similarity. Based on these findings it found that, upon assessing Article 8(1)(b) of the signs. Upon applying Article 8(5), the General Court then merely referred to this finding and rejected the appeal on grounds thereof. El Corte Inglés appealed this decision before the ECJ.

The judgment of the ECJ

With reference to its judgment in Intra-Presse v OHIM (C-581/13 P and C-581/13 P), the ECJ considers that, ''if the examination of the conditions for the application of Article 8(1)(b) of the Trade Mark Regulation has shown that there is some similarity between the signs at issue, the General Court must, in order to ascertain (...) whether the conditions for the application of paragraph 5 of that article are satisfied, examine whether (...) the relevant public is capable of establishing a link between those signs'' (paragraph 43). The ECJ then concludes that the General Court erred in law in the present case, as it ''should have examined whether (the low similarity it established in its assessment of Article 8(1)(b)) was not sufficient (...) for the relevant public to establish a link between those signs, for the purpose of Article 8(5) of the Trade Mark Regulation'' (paragraph 48).