The addition of a secondary element, such as 'by', is not enough to differentiate a mark from a well-known trademark even in a different market, as Clarisse Merdy explains in the context of a recent dispute between oil giant OMV AG and a feminine hygiene brand.
Established in 1956, OMV AG enjoys a strong reputation in Austria as a leading player in the oil industry and the field of sustainable energy. In August 2021, the oil company filed an invalidation action against the European trademark (EUTM) "OMV! By Vagisil" (No 017980289) which had been registered by Combe International LLC for non-medicinal products primarily intended for feminine hygiene (classes 3 and 5).
Drawing on its earlier EUTM registrations (No 000221598 and 000221606, pictured below), OMV AG act against the disputed registration on the following grounds:
- Damage to the reputation of its earlier trademarks, limited to products in class 4 and services in classes 37 and 40 (Article 60(1)(a) of Regulation 2017/1001, in conjunction with Article 8(5) of the European Union Trade Mark Regulation (EUTMR); and
- Risk of confusion with its earlier marks in classes 1, 4, 37 and 40 (Article 60(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark, in conjunction with Article 8(1)(b), EUTMR).
However, the Cancellation Division did not agree with OMV AG's arguments and dismissed the link between the trademarks.
Does a secondary element erase a trademark link?
Following the unfavourable decision, OMV AG filed an appeal, only for EUIPO's 4th Board of Appeal to also reject the invalidation action, on the grounds that:
- The products and services designated by the conflicting trademarks are not similar, thus excluding any risk of confusion within the meaning of Article 8(1)(b) of the EUTMR;
- Despite a "medium" degree of similarity between the signs and the significant reputation of OMV AG's trademarks in Austria for products and services in classes 04, 37, and 40, no link can be established between the trademarks, given the difference in nature and market of the products (Article 8(5), EUTMR).
The Board of Appeal concluded that, in the absence of such a link, the use of the contested trademark would not be likely to take unfair advantage of, or be detrimental to, the reputation or distinctiveness of OMV AG's earlier trademarks.
Although this decision illustrated the EUIPO's caution when extending trademark protection to very different sectors, this conclusion was not accepted by OMV AG, which filed a new appeal with the General Court of the European Union, seeking recognition of the link between the trademarks.
The EUIPO had given "decisive weight to the absence of similarity between the goods and services". The appellant therefore reminded the General Court of the importance of considering all relevant factors when assessing the existence of a link between a contested trademark and an earlier well-known trademark.
The importance of assessing even a minor degree of similarity
Reversal of the situation here, with the Court overturning the Board of Appeal's decision, essentially on the grounds of an error of assessment. Indeed, the comparison of the signs in this case was the key point of the final decision, since the existence of similarity between two trademarks is a common condition for the application of Article 8(1)(b) and Article 8(5) of the EUTMR. The difference between these two grounds lies in the degree of similarity. To apply Article 8(5), unlike Article 8(1), it is sufficient that the similarity exists, regardless of its degree (low, medium, or high). The cornerstone of its application is therefore the link, even if only slight, established by the relevant public (the general public in this case) between the conflicting trademarks.
In this case, the General Court considered that the contested trademark consisted of "By" and "Vagisil" (trade name or trademark) and "OMV". In parallel, it held that the Board of Appeal had erred in considering that the expression "By Vagisil" was sufficient to dismiss any link with OMV AG's earlier trademarks. According to the Board of Appeal, this wording clearly indicated the origin of the products, thus preventing any association with the oil company. The General Court rejected this approach: the element "OMV", placed at the beginning of the mark and possessing its own distinctive character, remains the dominant element common to the conflicting marks. Consequently, the existence of a link between the marks could not be excluded solely based on the presence of "By Vagisil". This link is an essential prerequisite for applying the article concerning damage to reputation.
Now, regarding the recognition of the reputation of the earlier marks (which had not been denied by the Board of Appeal), the General Court highlighted a key concept shaped by case law: the outstandingly high reputation. It characterises a broad reputation that extends beyond the public concerned by the products or services covered by the earlier mark (in classes 04, 37 and 40 in this case). The General Court has therefore become entrenched in the decision-making process of the Board of Appeal, finding that OMV AG had successfully demonstrated that its earlier marks enjoyed exceptional renown, extending beyond the products and services in its classes of interest and the relevant public (general public and professionals). It also reiterated that this exceptional renown reinforced the distinctiveness of these marks, which should therefore be considered high.
Regarding the comparison of goods and services, it is worth noting that the nature and degree of similarity are relevant factors in assessing the link between trademarks. In this case, although it is not denied that the goods and services in question are non-complementary and "radically different" (different intended uses, nature, points of sale, and manufacturers, etc.), the General Court observes an overlap in distribution channels, namely service stations, which are capable of selling personal care products covered by the contested trademark.
The addition of "by" is not sufficient to escape the link created with a well-known mark
Based on these elements, the "OMV! By Vagisil" judgment forcefully reiterates that a trademark's reputation offers broad protection, potentially extending to sectors far removed from its core business. The Court expressly stated that the addition of a secondary element – in this case, "By Vagisil" – was insufficient to appropriate the opening and highly distinctive term "OMV", thereby eliminating any connection that might be made in the mind of the relevant public with the earlier "OMV" mark, recognized as enjoying an exceptional renown.
This ruling provided the General Court with an opportunity to analyse Article 8(5) of the EUTMR and reiterate the mandatory cumulative conditions for granting extended protection to a so-called well-known mark:
- The earlier mark whose reputation is claimed and which is opposed to a later mark must be registered;
- The conflicting marks must be identical or similar (at least to a lesser degree);
- The earlier mark must have a reputation, whether in the Union (for an EU mark) or in the member state concerned (in the case of a national mark);
- Use of the contested mark without due cause must create a risk that an unfair advantage could be derived from the distinctive character or reputation of the earlier mark.
The key factor in this case was the recognition of exceptional renown. This means that the prior trademarks enjoy a reputation extending beyond the public concerned by the products and services bearing them. To demonstrate this, the applicant submitted a study on the level of awareness of the names of certain companies, regardless of the sector in which they operated, and its trademarks had received 96% recognition by the general public. This appendix proved that its trademarks were the most recognized by the Austrian public, ahead of other well-known trademarks unrelated to its field of activity.
Ultimately, this decision powerfully illustrates that renown, when it reaches an exceptional level, constitutes far more than a mere commercial advantage: it becomes a legal lever for enhanced protection. Such renown, duly demonstrated, allows the trademark holder to protect their mark and its use beyond their original market and to enforce respect for their identity even in the face of signs operating in radically different sectors. Thus, the EU General Court reaffirms that no secondary addition can neutralise the impact of a highly distinctive opening term, provided that a link, however tenuous, can be perceived by the relevant public. This ruling therefore establishes the capacity of a trademark of exceptional renown to prevent any parasitic appropriation of its distinctiveness, consolidating the essential function of guaranteeing origin and the deterrent effect of the regime provided for in Article 8(5) of the EUTMR.
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