The EU General Court has ruled that demonstrating detriment to a trade mark's distinctive character does not require proof of a change in economic behaviour of the average consumer of the goods or services for which the mark is registered. Although this point had been considered by the ECJ in a previous case (INTELMARK), the EU General Court interpreted Article 8(5) of the Community Trade Mark Regulation differently, finding that such effect would be inevitable following the dispersal of the identity of the earlier mark as a result of dilution, such that no separate evidence was required.

Background

In March 2006, Entec Industries Ltd (Entec) filed an application for registration of a Community trade mark at OHIM in respect of machinery and tools intended for professional gardening. In December 2006, Societe Elmar Wolf (SEW), the intervener in the case, filed a notice of opposition against the registration. The opposition was based on SEW marks registered in 1948 and 1999. Entec assigned its application to Environmental Manufacturing LLP (EML) in September 2007. The marks in dispute were:

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SEW opposed EML's registration on the grounds set out in Articles 8(1)(b) and 8(5) of Regulation No 207/2009 (the CTM Regulation), also requesting that SEW adduce evidence of use of the earlier marks under Article 42 of the CTM Regulation. The Opposition Division dismissed this opposition in January 2010, finding that there was no likelihood of confusion between the marks or evidence demonstrating detriment to the repute of the earlier marks (or any unfair advantage gained from them). SEW successfully appealed this decision, with the Second Board of Appeal of OHIM (the Board) holding that the relevant public could establish a link between the marks and that there was some similarity between them. The Board also considered that EML's mark could dilute the unique image of SEW's marks and take unfair advantage of their distinctive character or reputation, as well as finding that SEW's marks had been put to genuine and continuous use for the protected goods. EML then appealed to the General Court of the EU (EUGC) for annulment of the Board's decision.

The EUGC upheld the Board's decision. EML's first argument, that SEW had not demonstrated genuine use of its marks for domestic as opposed to professional gardening equipment, was dismissed - the EUGC considered that the two categories of goods were not essentially different.

EML's second line of argument, infringement of Article 8(5) of the CTM Regulation, gave rise to a more controversial finding. A key point in proving infringement was the risk of detriment caused to the distinctive character of the earlier marks, or 'dilution'. In Case C-252-07 Intel Corp Inc v CPM UK Ltd, the ECJ held that such detriment arose where the earlier mark's ability to identify the goods or services for which it was registered and used as those of the proprietor was weakened, since use of the later mark led to dispersion of the identity and hold that the earlier mark had on the public mind. Proving detriment also required evidence of a consequential change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered.

The EUGC considered that a proprietor had to adduce prima facie evidence of a future, not necessarily present, risk of detriment. However, the proprietor did not have to show an additional effect on the economic behaviour of the average consumer. The EUGC's interpretation of Intel was that change in a consumer's economic behaviour was established as an inherent result of demonstrating that a mark had been weakened in the manner set out above, rather than an issue that had to be proven separately.

Comment

The finding that EML's use of a wolf mark could be detrimental to the distinctive character of SEW's marks is unsurprising, despite arguments that SEW's marks represented a more amiable canine. However, the EUGC decision appears to directly conflict with the ECJ ruling that proof of dilution requires evidence of a consequential change in the economic behaviour of the average consumer. This interpretation lowers the standard of proof for dilution and therefore should boost a trade mark owner's ability to protect their marks.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

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The original publication date for this article was 28/05/2012.