The referring court asks essentially whether there is a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b) where a composite word or word/figurative sign comprises a company name followed by an earlier mark which consists of a single word with 'normal distinctiveness' and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role therein.
The referring court explains the case-law of the Bundesgerichtshof which articulates the Prägetheorie as follows. The starting point in determining trade mark similarity where individual components of conflicting trade marks are the same is the overall impression conveyed by the marks; what must be ascertained is whether the common component characterises the composite mark to the extent that the other components are largely secondary to the overall impression. There will be no likelihood of confusion on the sole ground that the common component merely contributes to the overall impression. Nor does it matter whether a sign incorporated in a composite mark has retained an independent distinctive role. Individual elements in the overall presentation of goods may however have a distinct role that is independent of the distinguishing function of other components; the components are then viewed in isolation and compared. A component of a sign which the trade recognises as designating not the product as such but the undertaking from which it originates is not generally regarded as characterising the sign. Where a designation of an undertaking is recognisable as such it should as a rule be secondary in terms of overall impression because the market concerned identifies the actual product designation from the other component of the sign.
However, it must be ascertained in each case whether the position might exceptionally be otherwise and whether, from the vantage point of the market concerned, the indication of the manufacturer is predominant. The decisive factors are the specific circumstances and usual practice in the relevant product sector. The Bundesgerichtshof has accepted that in the beer and fashion sectors an indication of the manufacturer is particularly important, which is why in those sectors references to the manufacturer always characterise the overall impression conveyed by the sign.
It appears that the Court of Justice has endorsed an approach similar to the Prägetheorie, which essentially consists in comparing the overall impression conveyed by two conflicting marks one of which is a component of the other. That to my mind is perfectly understandable, since it can be regarded as an application to a particular category of cases of the principles articulated in the Court 's earlier case-law. That case-law, it will be recalled, calls for a global appreciation based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The Court's statement in Matratzen that the overall impression of a composite mark may, in certain circumstances, be dominated by one or more of its components reflects that proposition. The extent to which the overall impression is so dominated is a question of fact for the national court.
In determining whether a composite word or word/figurative sign comprising a company name followed by an earlier mark which consists of a single word with 'normal distinctiveness' and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role therein is sufficiently similar to the earlier mark to give rise to a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b), a national court must base its assessment on the overall impression given by each mark, bearing in mind, in particular, their distinctive and dominant components, the nature of the public concerned, the category of goods or services in question and the circumstances in which they are marketed. Volledig arrest hier.