The wood for the trees

The European Court of Justice has delivered its judgment in relation to an application by L&D to register a combination word/logo mark, consisting of a fir tree shaped character with the words AIRE LIMPIO:

L&D originally applied to register its mark as a Community Trade Mark in relation to air fresheners and various other goods and services in April 1996. Opposition was filed by Julius Sämann, the owner of an earlier Community registration for a silhouette of a fir tree:

The opposition was also based on Sämann’s earlier International registrations for variants on the silhouette mark:

The Opposition Division of the Community Office rejected the opposition: representations of fir trees were not particularly distinctive where air fresheners were concerned and the differences between the two marks outweighed the similarities. Overall, the impressions created by the conflicting marks were different enough to rule out a likelihood of confusion.

Sämann appealed, and was successful in relation to the goods in classes 3 and 5, although not in relation to the class 35 services. The Board of Appeal focused its analysis on Sämann’s silhouette mark, which was “representative” of the other earlier marks which also included text. The Board of Appeal decided that the use of the “earlier mark” in Italy had given the silhouette mark a particularly distinctive character and, due to the distinctiveness and conceptual similarity, there was a likelihood of confusion on the part of the Italian public.In reaching this conclusion it relied upon Sämann’s advertising and sales of its air fresheners, and the fact that the word/logo CAR FRESHNER mark had been protected since 1954.

L&D appealed to the Court of First Instance (CFI), but was unsuccessful. The CFI looked at the question of whether Sämann had shown a particularly distinctive character in the silhouette mark, given that the evidence of use had related to use not of the silhouette mark alone, but of the silhouette featuring added words such as ARBRE MAGIQUE. It found that Sämann could claim this distinctive character for the silhouette alone because it had been used as part of the ARBRE MAGIQUE device and word mark, which had acquired a particularly distinctive character through long use in Italy.

The CFI also looked at the issue of the period in which this mark had become particularly distinctive. The evidence filed by Sämann had related to the period after the date of L&D’s application. Even so, the CFI found that this evidence could be taken into account because it allowed conclusions to be drawn on the situation at L&D’s application date, which was the relevant date for assessing the distinctive character of the Sämann marks.

L&D argued that the Board of Appeal had relied on the fact that the Sämann CAR FRESHNER mark had been registered since 1954, and had implied that the mark had become distinctive by virtue of long registration alone. The CFI disagreed with L&D’s submissions, finding that the Board of Appeal had not relied on the long-standing registration of the CAR FRESHNER mark, but rather on the established use in Italy of the ARBRE MAGIQUE device and word mark.

Overall, the CFI found that the dominant element of both the L&D and Sämann marks was the image of a fir tree, leading to conceptual similarity between the two marks. The average consumer would tend to trust the image of the mark to provide an indication of the origin of the products. As such, the court held that there was a likelihood of confusion.

On further appeal to the European Court of Justice, L&D raised various points. It criticised first of all the CFI’s finding that the silhouette mark had been found to have acquired a particularly distinctive character as a result of use of the ARBRE MAGIQUE mark: the ECJ found that the CFI had been justified in reaching this conclusion, given earlier case—law confirming that one mark could acquire distinctive character when it had been used as part of another mark. As for L&D’s claim that the CFI had wrongly stated that the image of a fir tree constituted the dominant part of the Sämann silhouette mark, this could not be overturned by the ECJ as it was a finding of fact rather than a point of law.

L&D contended that the CFI had wrongly rejected its argument that the device of a fir tree must be considered as having a weak distinctive character. The ECJ found that the CFI had found as a fact that the Sämann silhouette mark was not a mere representation of a fir tree, and that this finding was not subject to review by the ECJ.

L&D then sought to rely on arguments it had raised before the CFI to the effect that the silhouette of a fir tree could have only very weak distinctive character. The ECJ pointed out that a mark’s distinctive character could be enhanced by virtue of the use made of it, and that the CFI had found as a fact that the Sämann mark enjoyed this enhanced distinctive character in Italy, because of its use as part of the ARBRE MAGIQUE device and word mark.

The ECJ also looked at the issue of when distinctive character had been shown. L&D argued that the CFI and Board of Appeal had erred in law in relying on data concerning a period subsequent to L&D’s application date. The ECJ found that no error had been made: the CFI was justified in relying on this evidence, as it enabled conclusions to be drawn on the situation as it was at the application date. The CFI had correctly stated that a 50% market share in 1997 and 1998 could only have been acquired over time, and that the situation could not have been appreciably different in 1996.

L&D argued next that the Board of Appeal had incorrectly relied solely on general indications regarding sales figures and advertising, and that these could not be relied upon to justify a finding of acquired distinctiveness. The ECJ dismissed this ground, finding that the Board of Appeal had correctly taken into account the prolonged use of the ARBRE MAGIQUE mark as well as sales and advertising data.

The CFI was also criticised by L&D for assuming that the Sämann marks had been used since their registration dates. The ECJ dismissed this: the CFI had correctly based its finding of long use of the Sämann marks on the evidence of use and not on the registration date, and the CFI’s finding of fact on this point could not be overturned by the ECJ.

Next, L&D claimed that the CFI had wrongly found that the graphic element of the Aire Limpio mark had a dominant character: the ECJ dismissed this argument because the CFI’s assessment was a factual analysis which, as it was not claimed to be distorted, was not subject to review by the ECJ.In any case, the ECJ's case-law did not provide that the word element of a complex mark was automatically the dominant one.

The ECJ also made short work of the L&D claim that the CFI had erred in failing to take into account the “weak distinctive character” of the Sämann mark: the ECJ ruled that the CFI had correctly found the Sämann mark to have a particularly distinctive character, and so had made no error in considering it a strong mark rather than a weak one.

Finally, L&D claimed that it had not had a chance to properly respond to the CFI’s reliance on the evidence of use of the ARBRE MAGIQUE device and word mark rather than use of the silhouette mark.The ECJ dismissed this: L&D had referred in its CFI pleadings to the references by the Board of Appeal to the ARBRE MAGIQUE device and word mark, and so had the opportunity to comment on this evidence. In addition to this, Sämann's opposition had been based on the ARBRE MAGIQUE device and word mark as well as on the silhouette mark, and evidence relating to use of this mark had been submitted to the Opposition Division. Consequently, the ECJ held that L&D had had ample opportunity to comment on this evidence.

L&D’s appeal, having been unsuccessful on all grounds, was dismissed in its entirety.

This case raises two points of practical importance to trade mark proprietors, both relating to evidence of use and acquired distinctiveness. First, it is useful to have the Court confirm that use of one mark may lead to distinctive character of another mark, provided the latter mark has been used as part of the first. Trade marks are often complex, formed of a combination of words, images and get-ups. As such, it can be extremely difficult to isolate one element from the others when preparing evidence of acquired distinctiveness. Second, evidence which post-dates the relevant date may still be relevant if it allows inferences to be drawn as to the situation at an earlier date. Obviously it is good practice for trade mark proprietors to retain data and evidence concerning their past use of their valued marks, but if this is not available then evidence concerning later periods of use may still have evidential value.

Boult Wade Tennant

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