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Thursday, 23 October 2003

CFI CASE PROVES GALLING EXPERIENCE FOR ASTERIX

Hot off the press, a trade mark case from the CFI involving everyone’s favourite cartoon Frenchman. Trucco sistemi di telecomunicazione SpA applied to register a figurative mark, consisting of the word STARIX and a red oval as a Community trade mark for certain types of equipment in Class 9 and for telecommunications in Class 38. Éditions Albert René opposed the application, based on its ASTERIX mark, particularly on its registrations in Class 9 for certain types of equipment and Class 41 for certain film and intellectual property-related exploitation services, as well as amusement parks and production of orchestral and spoken-word performances. The application was turned down in part in a separate set of proceedings but in this set of proceedings, the Opposition Division and later the Board of Appeal rejected Éditions Albert René’s opposition based on Article 8(1)(b) of Regulation 40/94 (similar marks, similar/same goods and confusion) because the marks were not sufficiently similar. Éditions Albert René applied to the CFI, arguing that the Board should have found confusion both because the marks were similar and because of the notoriety that the ASTERIX mark had acquired in relation to the French cartoon character should have been taken into account by the Board even though Éditions Albert René had not proved it since Trucco had not disputed it. Éditions Albert René also argued that the application should be blocked under Article 8(5) (unfair advantage/detriment to an earlier mark’s distinctive character or repute).

The CFI dismissed the appeal. Regarding Article 8(1)(b), primarily because the two marks were not similar. They were visually dissimilar because the graphical representation of an oval and the italic typography used in Trucco’s sign meant that the overall impression given by both signs was different. The marks were phonetically dissimilar. Trucco’s mark began with a consonant and consisted of six letters, whereas Éditions Albert René’s mark began with a vowel and contained one more vowel that Trucco’s mark. The two only had one syllable in common – the final “rix” syllable. They were also conceptually dissimilar. Neither mark had a common meaning in any EU language. Though ASTERIX was close to the word asterisk this would only be perceived by those who conducted a detailed analysis of the mark and the test for similarity of signs set out by the ECJ assumes that consumers would form an overall impression of the marks only. Finally, the fact that the average consumer would associate ASTERIX with the cartoon character also made confusion unlikely.

Since the marks were dissimilar, the fact that Éditions Albert René’s mark was very distinctive per se and was widely known had no bearing on the application of Article 8(1)(b) to the case. There was also no need to consider Éditions Albert René’s arguments on whether certain of the goods in question were similar since there could be no Article 8(1)(b) case without the signs being similar.

Éditions Albert René’s plea that Trucco’s sign would dilute its mark contrary to Article 8(5) was inadmissible since Éditions Albert René had not asked OHIM to apply that provision at any time. Article 74 of Regulation 40/94 limits OHIM to examining facts, evidence and arguments provided by the parties and while the CFI has the power to annul or alter contested Board of Appeal decisions, this is only the case where there is a lack of competence of the part of OHIM, an infringement of an essential procedural requirement has taken place, there has been an infringement of the Treaty, Regulation 40/94 or EU law or where there has been an abuse of power. This limits the scope of review open to the CFI to issues of law raised before the Board of Appeal.

The IPKat wonders how the opponent would have got on with the Article 8(5) claim if it had been ruled admissible by the CFI. That article requires that the two marks in question be similar as a starting point however in this case, the marks were found to be dissimilar in the Article 8(1)(b) analysis. This raises the question of whether similarity of marks for the purposes of Article 8(5) means the same as similarity of marks for Article 8(1)(b). While the same language is used in both articles, the reason for requiring similarity is different in each case. In Article 8(1)(b) similarity must be shown with a view to establishing confusion but this is not the case in Article 8(5) where the aim is to show unfair advantage or detriment. The IPKat would be very grateful for any insight anyone has on this point and advises his readers to watch out for the imminent Adidas v Fitnessworld case on this point.

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