The Case

Trade mark Community trade mark. While it was true that, in the case of opposition to an application for registration of a Community trade mark based on the existence of only one earlier trade mark that was not subject to an obligation of use, the assessment of the likelihood of confusion was to be carried out by comparing the two marks as they were registered, the same did not apply where the opposition was based on the existence of several trade marks possessing common characteristics that made it possible for them to be regarded as part of a 'family' or 'series' of marks. No consumer could be expected, in the absence of the use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and-or to associate with that family or series another trade mark containing the same common element. Although it was possible under art15(2)(a) of Council Regulation (EC)40-94 to consider a registered mark as used where proof was provided of use of that mark in a slightly different form from that which had been registered, it was not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which had not been established, on the ground that the latter was merely a slight variation on the former. The argument that the holder of a national registration who opposed a Community trade mark application could rely on an earlier trade mark, the use of which had not been established on the ground that, under national legislation, that earlier mark had constituted a 'defensive trade mark' was incompatible with arts43(2) and (3) of Regulation40-94.