"GONNA WASH THAT MARK RIGHT OUTA MY HAIR ..."

Earlier this week the Court of First Instance (CFI) dismissed an appeal against the Board of Appeal's decision in L'Oreal's FLEXI AIR application, in Case T-112/03 L’Oreal SA v OHIM.

L'Oreal had applied to register as a Community trade mark the words FLEXI AIR for shampoos and hair preparations (Class 3). Revlon opposed, citing the likelihood of confusion with its earlier French, Swedish and UK registrations of the word mark FLEX for much the same goods. Although the Opposition Division invited Revlon to submit further evidence and gave L'Oreal a deadline for receiving its response, neither evidence nor observations were received. Somewhat too late, L'Oreal asked for proof of genuine use of Revlon's FLEX mark. The Opposition Division declined to take account of that request or of late observations submitted to it and rejected the application on the ground of likelihood of confusion. L'Oreal's appeal to the Board of Appeal having failed, the cosmetics giant appealed further to the CFI.

Flexing its muscles ... but L'Oreal really must pay more attention to the time

In its appeal L'Oreal contended that (i) the Board of Appeal was wrong to refuse to allow L'Oreal's request for proof that Revlon's mark had been used; (ii) the Board was wrong to conclude that there was a likelihood of confusion and (iii) the Board should have considered whether Revlon's FLEX mark could validly be put forward in opposition under United Kingdom law.

Revlon's FLEX: good for removing unwanted competing marks?

The CFI dismissed L'Oreal's appeal. The Board of Appeal was entitled to adopt a decision which rejected the request for proof of genuine use where L'Oreal had not justified the failure to submit that request within the time limit set by the Opposition Division. The Board was also entitled to take the view that FLEX and FLEXI AIR were similar at visual, phonetic and conceptual levels. The final argument of L'Oreal was also dismissed: it was based on the hypothesis that the Community Trade Mark Regulation 40/94 conferred on the proprietor of an earlier national trade mark greater rights in connection with an application for a Community trade mark than those conferred on him by the national legislation governing that earlier mark. This was not the case: national laws of member states governing likelihood of confusion between a trade mark applied for and an earlier national mark were fully harmonised. In those circumstances, L'Oreal's hypothesis was wrong.

The IPKat thinks the legal bits of this decision are right, but wonders whether the "likelihood of confusion" bit is right. FLEXI AIR is three syllables to FLEX's one; it is pronounced quite differently too. Conceptually, the common "flex" bit sounds a bit allusive to hair being flexible rather than rigid. Merpel agrees: cognoscenti of hair-care products are quite capable of distinguishing products bearing these brands.

Hair care here and here
Hair-raising activities here and here