Lovells

ECJ judgment today on evidence of reputation in OHIM opposition proceedings

The case (C-488/06 P, L & D v OHIM) concerned an opposition before the Office for Harmonization in the Internal Market (OHIM), based on several earlier rights. Some of the opposing signs were composed of a representation of a fir tree accompanied by word elements and one consisted of the mere silhouette of a fir tree. Before OHIM, the latter was considered to be well-known and particularly distinctive following its use as a part of the complex mark. In other words, evidence of reputation referring to a sign made up of both figurative and word elements was considered sufficient to establish a reputation for the purely figurative mark.  

The Court confirmed that this view was correct and that a sign may acquire a distinctive character following its use as part of another mark. It is sufficient that the relevant public "perceives the product or service designated by the mark as originating from a given undertaking". The Court's judgment is in line with its earlier judgment regarding the mark "HAVE A BREAK" (C-353/03, 7 July 2005). 

The ECJ also clarified that in the case of trade marks comprising both figurative and word elements, word elements cannot systematically be regarded as dominant. Similarity of signs (and likelihood of confusion) can also be found in cases where the conflicting signs have a figurative element in common, especially when it has a particularly distinctive character.

Finally, the Court emphasised that evidence post-dating the application date of the opposed mark cannot be dismissed altogether as belated. It may be taken into account when it "enables the drawing of conclusions on the situation as it was on that date". In particular, the Court held that substantial market shares concerning the two years subsequent to the application date of the contested CTM could not be simply discarded as they could only have been acquired progressively, suggesting that the situation was not appreciably different in the relevant year.