Article 8(5) protection under regulation extends only to registered marks

In Mülhens GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-150/04), the Court of First Instance (CFI) has upheld a decision by the Board of Appeal of OHIM rejecting an opposition to the registration of the figurative mark TOSCA BLU.

Minoronzoni Srl, a manufacturer of leather fashion items, sought registration of the TOSCA BLU mark for goods in Classes 18 and 25 of the Nice Classification for leather goods and clothing respectively. Mülhens GmbH & Co KG, a producer of perfume products, opposed the registration based on the earlier unregistered mark TOSCA. The grounds for opposition under Article 8(1)(b) and 8(5) of the Community Trademark Regulation (40/94/EC) were as follows:

• There was a likelihood of confusion arising from the similarity of the marks and of the goods covered; and
  
  
• The registration would cause unfair advantage or detriment to the distinctive character of a well-known earlier mark.

The CFI held that the respective goods were not sufficiently complementary to be considered similar. It also held that protection under Article 8(5) of the regulation did not extend to unregistered marks.

In respect of Article 8(1)(b), the CFI conceded that the marks were undeniably similar. However, it was still necessary to show that the respective goods were similar or identical. In this case, they were held to be very different.

The court first noted that perfume products and leather goods are clearly different in their nature, purpose and method of use, in the same way that perfume products and clothing are different. Moreover, nothing showed them to be in competition with each other or functionally complementary. However, despite the above differences and the fact that goods may even fail to be counted as functionally complementary, the CFI stated that they may be regarded as aesthetically complementary in the eyes of the relevant public.

In order for aesthetic complementarity to be shown, however, genuine aesthetic necessity must be demonstrated. This requires that one product is indispensable or important for the use of the other and that consumers regard it as ordinary and natural that such products are used together (the CFI referred to Sergio Rossi (Case T-169/03)). However, the mere existence of aesthetic complementarity was insufficient to show similarity between the goods. Mülhens argued that the public was used to fashion industry products being marketed under perfume trademarks through the granting of licences. The court held that this alone was insufficient to compensate for the lack of similarity between the goods in question and that it did not meet the criteria for aesthetic complementarity. The CFI also rejected a further argument advanced by Mülhens that perfume and leather goods had a common importance for a person's image on the basis that this alone did not establish a genuine aesthetic necessity.

With regard to the second opposition ground, despite the wording of Article 8(5) which referred only to earlier registered marks, Mülhens argued that giving protection to registered marks only would be contrary to the overall scheme and purpose of the regulation, which aims to protect well-known marks, whether registered or not. The CFI disagreed and followed the wording of the article itself. The court held that the protection afforded by Article 8(5) could be extended only to registered marks.

The key point to take from this case is that registration is crucial in order to afford a well-known mark every possible protection under EU law. It is likely that, had Mülhens registered its mark, the court would have given it the requested protection. Further, although the argument of complementarity would no doubt have failed, Mülhens may have succeeded in arguing that the reputation of its perfume goods would be wrongly transferred to Minoronzoni's leather products.

Tom McNaughton, Hammonds, London