Il secondo non è vero che sia dissimilar dal primo: è similar, anche se solo in parte.
Si noti l’evidente tentatico del secondo di porre una netta differenza nel nome, la cui rilevanza è duplicemente notevole all’interno di ciascun marchio: sia perchè il nome prevale sul disegno nella percezione cnsumeristica (lo stesso BoA lo ricorda) sia perchè è scritto assai ingrande nel caso specifico.
Quindi il rigetto dell’opposizione era ingiustificato e la procedura torna alla Opposition Division per vedere se ciò basta per un giudizio di confondibilità (essenzialmente data la rinomanza dell’anteriorità: <<It must be borne in mind, in particular, that, depending on the degree of recognition of the earlier trade mark, even a low degree of similarity between the signs may be sufficientfor the assumption of a link within the meaning of Article 8(5) EUTMR>>, § 25)
Così il 1 Board of appeal dell’ EUipo 20 giuigno 2023In Case R 1952/2022-1Mast-Jägermeister SE c. Tin Kakuszi (ungheria) (v pag. web euipo e accouint del fascicolo nel database ove trovi trad. automat. dall’ioriginale tedesco)
<<18. The earlier figurative mark likewise consists of a rectangular shape which resembles a-bottle label. On a dark-green background there is a white rectangle bordered by a green line followed by a white line. There is a horizontal banderolein orange in the middle of the Zei chens, which contains the text ‘Jägermeister’ in black stylised letters. Underneath it is the word element ‘SELECTED 56 BOTANICALS’ in considerably smaller lettering together with further details, which are barely legible on account of their even smaller font. Above the orange stripred is a white and golden green circle which is decorated with golden-coloured leaves on its underside. The stylised head of a stag with antlers in a jet-circle is depicted in the green circle. Above and framed by the anchor is a circle in a lighter green with a white Latin cross. For the above reasons, the most distinctive element of the earlier sign is the word element ‘Jägermeister’. Nevertheless, the brown targeted will not-neglect the graphic design as a whole and in particular the representation of a stag’s head on a green circle with a cross and the green and orange colour schema in the overall impression of the earlier trade mark.
19. Despite the differences that exist, in particular the differences in the most distinctive word components ‘ST. Joseph’ and ‘Jägermeister’ and in terms of the figurative elements (head of a man in contrast to the head of a deer), the opposing signs have a low degree of visual similarity, as theirgraphic arrangement is very similar overall. The signs are identical in terms of their colour schema (green, white, gold and orange/red), their basic rectangular shape, their construction and their essential graphic elements and their arrangement to one another (circular green element with a portraitsimilar strip above an orange-coloured/red banderole).
20. Both the earlier sign and the central left-hand part of the sign applied for consist of an inner (dark) white rectangle which is firstly bordered by a green, then a dark-green white line and then a dark green line. Both signs contain a red or orange band positioned in the centre with a black lettering above which a dark-and-white and golden green circle with a gold floral decoration is attached. In the dark green circle, there is in each case a stylised front view of a head (by a man in the contested sign and a stag in the earlier sign), which is surrounded by a jet circle in each case.
21. The signs under comparison therefore have a low degree of visual similarity.
22. The signs are aurally dissimilar, as the most distinctive word elements ‘ST. Joseph’ of the contested sign and ‘Jägermeister’ of the earlier sign un are pronounced differently-depending onthe different relevant languages.
23. The signs are conceptually dissimilar. Some of the consumers will understand the word element ‘ST. Joseph’ of the contested sign as a reference to the naked Josef. The word-element ‘Jägermeister’ of the earlier sign as a whole has no meaning. Nevertheless, the German-speaking consumer in any case immediately recognises therein thefact that the terms ‘Jäger’ and ‘Meister’ are combined, and therefore a meaning that differs from ‘ST. Joseph’. Furthermore, for all the consumers targeted, the signs differ in the meaning of the respective figurative elements, namely the depiction of a head of a man in the application, in contrast to the depiction of a head of a deer in the earlier trade mark.
24. Overall, the signs under comparison therefore have a low degree of similarity.
25. The Opposition Division considered the signs to be dissimilar and therefore, from their point of view, did not examine the further requirements ofthe asserted opposition. However, since, as stated above, the signs have a low degree of visual similarity, this must be remedied. It must be borne in mind, in particular, that, depending on the degree of recognition of the earlier trade mark, even a low degree of similarity between the signs may be sufficientfor the assumption of a link within the meaning of Article 8(5) EUTMR (-16/01/2018, 398/16, COFFEE ROCKS (fig.)/STARBUCKS COFFEE (fig.) et al., EU:T:2018:4, § 78)>>.