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- 1.Both Art. 9(2)(b) and Art. 9(2)(c) of Regulation No. 207/2009 require the identicality or similarity of signs. The cases mentioned in these two provisions concern a different degree of similarity. The degree of similarity may be lower in relation to trade marks with a reputation.
Applicable to all trade marks, Art. 9(2)(b) of Regulation No. 207/2009, as a condition of a violation, requires the likelihood that the public will be confused, which also includes the likelihood of association between the sign and the trade mark.
However, this condition does not occur in Art. 9(2)(c) of the Regulation, which refers to trade marks with a reputation. Instead, it is necessary that the use of a sign similar to a trade mark can be of undue advantage to the violator or be detrimental to the distinctive character or reputation of the Community trade mark, which can also occur with a lower degree of similarity between signs.
However, this differentiation does not change the fact that in both cases a certain degree of similarity must occur.
If the assessment shows that there is no similarity between a trade mark and a sign, that assessment cannot be altered by the fact that the sign initially used could be considered to be similar to the trade mark. The fact that the sign currently in use is similar to the one used previously, and the latter is similar to the trade mark, may have some significance in assessing the similarity between the current sign in use and said trade mark; however, the decisive role should be given to a direct comparison of the two signs.