UE General Court, in the case T-378/11 regarding “Medinet” trademarks (hereunder represented), took position on the relevance of colour in the perception of the relevant public.
Franz Wilhelm Langguth Erben GmbH & Co. KG filed an application for registration of Community figurative trademark claiming, pursuant to Article 34 of Regulation No 207/2009 (“CTMR”), the seniority of earlier national and international figurative marks – representing a gold cross containing the word element “Medinet”.
The Examiner refused the claim of seniority of the earlier national and international marks since the Community trademark applied for did not designate any specific colour, whereas the earlier national and international marks were golden in colour.
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Applicant, therefore, lodged an appeal against the Examiner’s decision and, after the Fourth Board of Appeal of OHIM dismissed the appeal, brought action against such decision before the General Court.
The latter confirmed OHIM’s decision, highlighting that, in order to uphold the claim of seniority of the earlier national mark for the purposes of the application for registration of the Community trademark, three cumulative conditions must be fulfilled: (i) the goods or services covered by the Community trade mark applied for must be identical to, or contained within, those covered by the earlier mark; (ii) the proprietor of the marks at issue must be the same; (iii) the earlier mark and the Community trade mark applied for must be identical, bearing in mind that a sign is identical with a trademark only where it reproduces, without any modification or addition, all the elements constituting the trademark itself or where, viewed as a whole, it contains differences which are so insignificant that they may go unnoticed by an average consumer.
General Court concluded that Medinet trademarks, even if sharing all other elements, differed in colour and therefore were not identical according to Article 34 CTMR.