Distinctive Character of a Trademark May Be Inferred from an Earlier Mark
- European Union
- 09/08/2008
- Roschier, Attorneys Ltd. - Sweden
On 17 July 2008, the ECJ ruled in P L & D SA v OHIM, Julius Sämann Ltd (C-488/06 P) on whether the distinctive character of a trademark may be based on an earlier trademark. P L & D had applied to register as a Community trademark the tree shaped AIRE LIMPIO figurative mark for, e.g., air fresheners. Sämann opposed, citing its earlier silhouette tree Community trademark and two almost identical silhouette International registrations, one of which read “ARBRE MAGIQUE”. OHIM’s Opposition Division based its decision on Sämann’s Community trademark and rejected the opposition finding that the shape of fir tree was not particularly distinctive for air fresheners. Both the CFI and OHIM’s Board of Appeal rejected P L & D’s registration and found that it was liable to be confused with Sämann’s Community trademark which had acquired a distinctive character as a result of the use and well-known nature of the ARBRE MAGIQUE trademark in Italy. The ECJ confirmed that distinctive character of a mark may result from its use as part of another registered mark. It found that CFI was correct in finding that the silhouette of a fir tree was distinctive and that it had acquired a particularly distinctive character as a result of being used as part of the ARBRE MAGIQUE mark which is well-know in Italy.
