«(Community trade mark – Regulations (EC) No 40/94 and No 2868/95 – Opposition – Likelihood of confusion – Alteration of a decision of the Board of Appeal – Application for registration of Community word mark BASS – Earlier word mark PASH)»

1.. Community trade mark – Appeal procedure – Appeal brought against a decision of the Opposition Division – Decision of the Board of Appeal going beyond the scope of the opposition – Unlawful (Council Regulation No 40/94, Arts 43(5), 62(1) and 74(1))

2.. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an identical or similar earlier mark registered for identical or similar goods or services – Risk of confusion with the earlier mark – Similarity between the marks at issue – Whether semantic differences capable of counteracting visual or aural similarities – Conditions (Council Regulation No 40/94, Art. 8(1)(b))

3.. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an identical or similar earlier mark registered for identical or similar goods or services – Risk of confusion with the earlier mark – Word marks BASS and PASH (Council Regulation No 40/94, Art. 8(1)(b))

4.. Community trade mark – Appeal procedure – Appeal against a decision of the Opposition Division – Suspensive effect – Contested decision taking effect following the final refusal of the Board of Appeal – Refusal incorporated into a decision of the Court of First Instance giving judgment by virtue of its power of alteration (Council Regulation No 40/94, Arts 57(1), 59 and 63(3))

JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber) 14 October 2003 (1)

((Community trade mark – Regulations (EC) No 40/94 and No 2868/95 – Opposition – Likelihood of confusion – Alteration of a decision of the Board of Appeal – Application for registration of Community word mark BASS – Earlier word mark PASH))

In Case T-292/01,

applicant,

v

defendant, the intervener before the Court being

ACTION brought against the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 12 September 2001 (Case R-740/2000-3) relating to opposition proceedings between Pash Textilvertrieb und Einzelhandel GmbH and Phillips-Van Heusen Corporation,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),

composed of: N.J. Forwood, President, J. Pirrung and A.W.H. Meij, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the written procedure and further to the hearing on 4 March 2003,

gives the following

...

The subject-matter of the dispute

The application for annulment

Arguments of the parties

Findings of the Court

The application to reject definitively and in its entirety the opposition to registration of the mark applied for in respect of goods falling within Class 25

On those grounds,

THE COURT OF FIRST INSTANCE (Second Chamber),

hereby:

Forwood

Pirrung

Meij

Delivered in open court in Luxembourg on 14 October 2003.

H. Jung

N.J. Forwood

Registrar

President