Obelix too famous to be confused with a mobile phone service

There were really no excuses for the IPKat to take so long to write a little note on Case C-16/06 P Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S. This was the final ruling that France Telecom SA's MOBILIX Community trade mark application (Classes 9, 16, 35, 37, 38, 42) was not likely to be confused with Obelix, a much-celebrated character in Albert René's equally celebrated Asterix the Gaul comic strip -- and also a Community trade mark in its own right for a wide range of goods and services. 

Right: Despite his strength, Obelix has failed to carry the day with the jurists of Luxembourg.

Albert René had claimed that CTM protection for the name of the Mobilix mobile phone service across the EU would risk confusing consumers on the ground that the words MOBILIX and OBELIX were similar and the latter was used on products of a similar nature, such as computer programs.

OHIM accepted the MOBILIX mark for registration in 2002 on the basis that the similarity was effectively offset by the fact that everyone knew Obelix as a fictional character (the "counteraction" principle). A OHIM Board of Appeal allowed the Paris-based publisher's opposition in part. In respect of MOBILIX "signalling and teaching apparatus and instruments" and OBELIX "optical and teaching apparatus and instruments" (Class 9) and MOBILIX "business management and organisation consulting and assistance, consulting and assistance in connection with attending to business duties" and OBELIX "marketing and publicity" (Class 35) there was a likelihood of confusion in the mind of the relevant public -- but that there was no such likelihood in respect of the other goods and services for which registration of MOBILIX was sought. Albert René's appeal was dismissed in 2005 by the Court of First Instance of the European Communities (CFI), which concluded that the Board's assessment was correct. It is the decision of the CFI which has been upheld this month by the Court of Justice of the European Communities.

A Bloomberg report from Stephanie Bodoni records that Jochen Pagenberg (Bardehle Pagenberg Dost Altenburg Geissler), the highly respected attorney for the French publisher, was less than happy with the decision. He is quoted as saying:

"I am completely bewildered. Only one single letter separates our trade mark from the Mobilix name. If that isn't enough anymore to justify a risk of confusion, then we can throw away the whole trade mark law".

 The IPKat begs to disagree. He thinks that the examiner, the Board of Appeal, the CFI and the Court of Justice have got it dead right. The "counteraction" theory, annunciated so clearly in the Picasso/Picaro dispute in Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643 (noted by the IPKat here) seems totally appropriate. Possibly this is because, when he first saw the MOBILIX mark, it suggested to him the word "mobile" and did not even call to his mind the menhir-tossing Obelix.  Merpel says, how curious it is that, even after more than a decade of attempts to establish common standards, lawyers in some jurisdictions still appear to prefer a far lower threshold as to what constitutes "confusion" than do their brethren in other countries.  Is this a crafty attempt to avoid being entrusted with the weekly trip to the supermarket to do the family shopping?