Case C‑383/12 P

Environmental Manufacturing LLP

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Appeal — Community trade mark — Opposition proceedings — Figurative mark representing a wolf’s head — Opposition by the proprietor of the national and international figurative marks containing the word elements ‘WOLF Jardin’ and ‘Outils WOLF’ — Relative grounds for refusal — Detriment to the distinctive character of the earlier mark — Regulation (EC) No 207/2009 — Article 8(5) — Change in the economic behaviour of the average consumer — Burden of proof’

Summary — Judgment of the Court (Fifth Chamber), 14 November 2013

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Detriment to the distinctive character of the earlier mark — Burden of proof

(Council Regulation No 207/2009, Art. 8(5))

The detriment or the risk of detriment to the distinctive character of the earlier mark provided for in Article 8(5) of Regulation No 207/2009 on the Community trade mark cannot be established without evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future, and thus whether the goods or services at issue are similar or not.

The concept of ‘change in the economic behaviour of the average consumer’ lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009, in as much as that similarity does not cause any confusion in their minds. A higher standard of proof is required in order to find detriment or the risk of detriment to the distinctive character of the earlier mark in order not to arrive at a situation in which economic operators improperly appropriate certain signs, which could damage competition. Admittedly, Regulation No 207/2009 and the Court’s case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions. None the less, such deductions must not be the result of mere suppositions, but must be founded on ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’.

(see paras 34, 36, 37, 40-43, 45)

Case C‑383/12 P

Environmental Manufacturing LLP

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Appeal — Community trade mark — Opposition proceedings — Figurative mark representing a wolf’s head — Opposition by the proprietor of the national and international figurative marks containing the word elements ‘WOLF Jardin’ and ‘Outils WOLF’ — Relative grounds for refusal — Detriment to the distinctive character of the earlier mark — Regulation (EC) No 207/2009 — Article 8(5) — Change in the economic behaviour of the average consumer — Burden of proof’

Summary — Judgment of the Court (Fifth Chamber), 14 November 2013

Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Detriment to the distinctive character of the earlier mark — Burden of proof

(Council Regulation No 207/2009, Art. 8(5))

The detriment or the risk of detriment to the distinctive character of the earlier mark provided for in Article 8(5) of Regulation No 207/2009 on the Community trade mark cannot be established without evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future, and thus whether the goods or services at issue are similar or not.

The concept of ‘change in the economic behaviour of the average consumer’ lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009, in as much as that similarity does not cause any confusion in their minds. A higher standard of proof is required in order to find detriment or the risk of detriment to the distinctive character of the earlier mark in order not to arrive at a situation in which economic operators improperly appropriate certain signs, which could damage competition. Admittedly, Regulation No 207/2009 and the Court’s case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions. None the less, such deductions must not be the result of mere suppositions, but must be founded on ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’.

(see paras 34, 36, 37, 40-43, 45)