Case C-488/06 P

L & D SA

v

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

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Articles 8(1)(b) and 73 – Figurative mark ‘Aire Limpio’ – Community, national and international figurative marks representing a fir tree with various names – Opposition by the proprietor – Partial refusal to register – Inference of the particularly distinctive character of the earlier mark from evidence relating to another mark)

Summary of the Judgment

1.        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 registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

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 registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

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 registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

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 registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

1.        The acquisition of the distinctive character of a mark may be as a result of its use as part of another registered trade mark. It is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated by the mark, as originating from a given undertaking.

That is true both for the acquisition of distinctive character by a mark which it was sought to register and for establishing whether an earlier mark has a particularly distinctive character in order to ascertain whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark.

(see paras 49, 51)

2.        In the examination of the opposition brought on the basis of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark by the owner of an earlier mark, that earlier mark can have a particularly distinctive character not only per se, but also because of the reputation it enjoys with the public. An argument based on the very weak inherent distinctive character of the earlier mark cannot therefore cast doubt on the finding that that mark has acquired a particularly distinctive character because it is well known.

(see paras 65, 67)

3.        In the examination of the opposition brought on the basis of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark by the owner of an earlier mark, account may be taken of evidence which, although subsequent to the date of filing the application for the Community trade mark, enables the drawing of conclusions on the situation as it was on that date.

(see para. 71)

4.        In the examination of the opposition brought on the basis of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark by the owner of an earlier mark, there is no rule that in the case of mixed trade marks comprising both graphic and word elements, the word elements must systematically be regarded as dominant. Furthermore, there is no rule to the effect that the name used in that complex mark must be regarded as distinctive and fanciful where it is devoid of specific meaning.

(see paras 55, 84)