Case T‑570/10

Environmental Manufacturing LLP

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Opposition proceedings — Application for a Community figurative mark representing a wolf’s head — Earlier national and international figurative marks WOLF Jardin and Outils WOLF — Relative grounds for refusal — Detriment to the distinctive character or repute of the earlier mark — Article 8(5) of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Partial use — Effect

(Council Regulation No 207/2009, Art. 42(2) and (3))

2.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark — Relevant public

(Council Regulation No 207/2009, Art. 8(5))

3.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks — Criteria for assessment

(Council Regulation No 207/2009, Art. 8(5))

4.      Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Protection afforded also where a sign is used for identical or similar goods or services — Detriment to the distinctive character of the earlier mark

(Council Regulation No 207/2009, Art. 8(5))

1.      Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. In that regard, it is, in practice, impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(see para. 21)

2.      The public to be taken into account, in accordance with Article 8(5) of Regulation No 207/2009 on the Community trade mark, varies according to the type of injury alleged by the proprietor of the earlier mark. On the one hand, both the distinctive character and the repute of the earlier mark must be assessed by reference to the perception of the relevant public, which consists of average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. Accordingly, the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. On the other hand, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(see para. 32)

3.      The protection provided by Article 8(5) of Regulation No 207/2009 on the Community trade mark is not conditional on there being a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant public. It is sufficient for the degree of similarity between those marks to have the effect that the relevant public establishes a link between them. Whether such a link exists must be appreciated globally, taking into account all factors relevant to the circumstances of the case such as: the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public.

(see paras 36, 37, 41)

4.      Article 8(5) of Regulation No 207/2009 on the Community trade mark may be relied on in support of an opposition lodged against not only an application for a Community trade mark covering goods and services which are not identical or not similar to those designated by the earlier mark but also against an application for a Community trade mark covering goods which are identical or similar to those of the earlier mark.

The fact that competitors use somewhat similar signs for identical or similar goods compromises the immediate connection that the relevant public makes between the signs and the goods at issue, which is likely to undermine the earlier mark’s ability to identify the goods for which it is registered as coming from the proprietor of that mark.

(see paras 61, 62)