ASTERIX outfought in opposition to STARIX

In Les Editions Albert René v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld a decision to reject the plaintiff's opposition to the registration of STARIX as a Community trademark. It held that the proposed registration was not confusingly similar to the well-known ASTERIX mark.

Trucco sistemi di telecomunicazioni SpA, an Italian company, applied to the OHIM to register a figurative trademark consisting of a red coloured oval followed by STARIX in italics in Classes 9 and 38 of the Nice Classification. Les Editions Albert René, a company that owns the intellectual property rights in the Astérix series of comic-strip books and cartoons, opposed the registration on the grounds that it was confusingly similar to its earlier registration for the word mark ASTERIX, particularly its registrations in Classes 9 and 41.

The Opposition Division of the OHIM rejected the opposition, holding that there were differences between the two signs, which ruled out any risk of confusion. However, it upheld the opposition of a separate company, which led to the application being refused in part. Albert René appealed against the rejection of its opposition.

The First Board of Appeal dismissed the appeal. Albert René then applied to the Court of First Instance. This time, it alleged not only breach of Article 8(1)(b) of the Community Trademark Regulation (likelihood of confusion) but also breach of Article 8(5) (protection against dilution). The court held that the two marks were visually, phonetically and conceptually dissimilar. The graphical representation of the oval and the italic font used in Trucco's mark meant that the overall impression produced by each mark was different. In addition, it noted that Trucco's mark commenced with a consonant and had six letters, whereas Albert René's mark began with a vowel. The only syllable in common was 'rix'. The marks did not have a common meaning in any EU language and the fact that the average consumer would associate the ASTERIX mark with a cartoon character would also make confusion unlikely. Therefore, infringement of Article 8(1)(b) was rejected without the necessity of considering the similarity between the goods and services designated by the particular marks.

Albert René had not previously requested the OHIM to apply Article 8(5) at any time during the proceedings. While it had invoked the repute of its earlier trademark in its opposition to the trademark application and before the Board of Appeal, this was exclusively within the context of the application of Article 8(1)(b). Accordingly, Albert René could not appeal on this ground as it had not raised it during the administrative phase of the proceedings before the OHIM. Article 135(4) of the Rules of Procedure of the European Court of First Instance confirms this, as it provides that a party's pleadings may not change the subject matter of the proceedings that it had brought before the Board of Appeal.

This case emphasizes how important it is that all potential grounds of opposition are raised during the administrative phase of proceedings. However, it is arguable whether the court's decision in this case would have been any different, even if it had considered Article 8(5). Article 8(5) requires the marks to be identical or similar and here the court held that this was not the case.

Patricia McGovern, LK Shields Solicitors, Dublin