The Second Board of Appeal (BoA) of OHIM had annulled the decision of the Opposition Division and rejected the mark applied for. It examined the opposition based on the earlier CTM, for that trade mark, registered for less than five years at the time of publication of the application for registration of the mark applied for, was not subject to any requirement as to use.

The GC found that the BoA was right to consider that the “signal lanterns” covered by the CTM applied for were included in the category of “signalling apparatus and instruments” in Class 9 and were covered by the earlier mark. The rest of the goods are also identical.

The marks displayed a rather low degree of visual similarity, a high degree of aural similarity for the French-speaking public and at least a low degree of similarity for the rest of the public.

Conceptually, the signs have no meaning, except for the Italian speaking public, for whom the word ‘onesto’ means ‘honest’. The GC rejected the CTM applicant’s submissions that the signs are conceptually different, since ‘onesto’ means ‘honest’ in Italian, whereas the word which constitutes the earlier sign, namely ‘ensto’, has its roots in Finnish. However, this latter claim was not demonstrated before OHIM. Thus, other than in relation to the Italian speaking public, for whom the signs are indeed different, no comparison can be made in the present case of their conceptual similarity

Regarding the overall impression, the GC confirmed that there was a likelihood of confusion between the marks at issue, at least for the French-speaking public, for whom there is a high aural similarity.