The Court of Justice of the European Union (CJEU) has ruled that owners of reputable marks must provide evidence of a change in the economic behaviour of the average consumer, or at least a serious risk of such, if they are to prove that a defendant’s use of an identical or similar mark would take contrary to Article 8(5) of the Community Trade Mark Regulation (CTMR) “unfair advantage of, or be detrimental to, the distinctive character or the repute of its earlier trade mark”.

The story so far

In the case of Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market, Société Elmar Wolf (Case C-383/12 P), the applicant Environmental Manufacturing LLP (Environmental Manufacturing) applied to register a figurative sign depicting a wolf’s head for machines which process wood and green waste. Wolf trade mark no. UK00002329126. Société Elmar Wolf (Elmar Wolf) opposed the registration alleging a likelihood of confusion (Article 8(1)(b) CTMR) with its earlier figurative and word wolf trade marks in relation to tools for gardening and agriculture. Elmar Wolf further alleged that its earlier marks have a reputation and that Environmental Manufacturing’s mark would take unfair advantage of or be detrimental to the distinctive character or the repute of its earlier trade marks (Article 8(5) CTM Regulation). Outils Wolf Trade Mark registration; Wolf Jardin trade mark registration. The OHIM Opposition Division dismissed the opposition because Elmar Wolf had not produced evidence of detriment to the repute of its earlier marks or any unfair advantage gained from them.

Appeals by the hair of their chinny chin chins

On appeal by Elmar Wolf, the Board of Appeal held that, due to the high repute of Elmar Wolf’s Marks, the similarity of the opposed marks and the likelihood that that the public may draw a link between the marks, Environmental Manufacturing’s mark might dilute the unique image of Elmar Wolf’s earlier marks and take unfair advantage of their distinctive character and reputation. Environmental Manufacturing appealed that decision to the EU General Court, on the basis that Elmar Wolf had not submitted evidence specifically explaining the harm caused by the dilution and had, instead, merely alleged risk of dilution without evidence to back it up. The EU General Court dismissed the second appeal and, upholding the Board of Appeal’s decision, stated that due to the apparent risk of dilution by Environmental Manufacturing’s mark, it was not necessary to prove that further. Judgment of the General Court (Fourth Chamber), 22 May 2012. Environmental Manufacturing appealed to the CJEU.

CJEU’s allows the appeal

The CJEU reiterated its previous case law in Intel Corporation, holding that in order to succeed in a trade mark infringement claim for taking unfair advantage/causing detriment of a reputable mark, the owner of the reputable mark must adduce evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or be able to convince the court based upon evidence that there is a serious likelihood that such a change will occur in the future. To emphasise the point, the CJEU said that a change in the economic behaviour of the average consumer imposes an objective condition, it cannot be deduced solely from subjective elements such as consumers’ perceptions. In other words, the mere fact that the consumers notice a new sign that is similar to an earlier sign is not sufficient of itself to establish the existence of detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Art 8(5), in as much as that similarity does not cause any confusion in their minds. The CJEU stated that it does not require evidence of actual detriment, holding that logical deductions establishing a serious risk of detriment is all the CTMR requires. However, such deductions must not be the result of mere suppositions, but must instead be founded on an analysis of the evidence, the probabilities and by taking account of the relevant commercial sector as well as all the other circumstances of the case. Accordingly, CJEU set the judgment aside and referred the case back to the General Court.

Commentary

This ruling confirms the CJEU position that in order for owners of reputable marks to prevent the registration and/or use of identical/similar marks, they must establish by evidence that the later mark has changed the economic behaviour of the average consumer, or that there is a serious likelihood of that, rather than merely establishing that consumers have identified a similarity in the marks. The question that naturally arises from the above is: what sort of evidence do you need? Clearly there are two types of situations: current use of a later mark that is alleged to infringe the earlier registered mark; and future use of a mark which has not yet commenced but has become apparent because a trade mark application has been filed. Where the later mark or sign is already in use, the owner of the earlier mark should seek to obtain actual evidence from relevant consumers of the link formed in their mind, which can typically be obtained by surveys and the like. Where the later mark is not yet in use but merely at the stage of application for registration, evidence of consumer perception may still be obtainable (again via surveys) and inferences drawn from that. Evidence of the reputation, repute and distinctive character of the earlier mark should however always be available, and those characteristics should never need to be established by inference.

This article was prepared by Inga Pietsch (inga-marlene.pietsch@nortonrosefulbright.com / +44 20 7444 2468) of Norton Rose Fulbright’s London office.