McDonald's International Property Co. Ltd v. TOSTADEROS SOL DE ALBA, S.A.

The marks have a certain degree of visual and phonetic similarity because of the common element ‘Mc. Conceptually, the ‘Mc element, will be most probably perceived as standing for the initial part of an Irish or Scottish family name, meaning ‘son of. Because of this common element ‘Mc the signs will be seen to have a relevant degree of conceptual similarity. The figurative elements of the contested CTM showing several kinds of nuts will not influence the overall impression of the mark as they are merely descriptive of the designated goods. Since the conflicting signs exhibit some similarities and differences, the targeted consumer can be led to believe that the relevant goods bearing similar trade marks, come from the same or economically-linked undertakings. The enhanced distinctiveness of the earlier mark as a result of its extensive use could only but reinforce this finding. Since the opposition has been upheld on the basis of Art. 8(1)(b), there is no need to address the grounds of the opposition based on Art. 8(5) CTMR. The appeal is dismissed.