Board should have considered distinctiveness evidence, rules CFI

In Kaul GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has overturned the OHIM's decision to dismiss the plaintiff's opposition to the registration of an ARCOL mark.

Atlantic Richfield Company, best known for its activities in the petroleum industry, applied to the OHIM to register the word mark ARCOL as a Community trademark for chemical substances for preserving foodstuffs. Kaul GmbH filed an opposition against registration based on its earlier CAPOL Community trademark for identical goods. The Opposition Division and the Board of Appeal of the OHIM rejected the opposition on the grounds that even if the goods were identical, there could not be any likelihood of confusion between the marks because they were different visually and phonetically.

In its decision, the Board of Appeal pointed out that it could not take account of Kaul's claim that its CAPOL mark has a high level of distinctive character because it had only put forward this argument at the appeal stage. It stressed that the legal basis of an opposition cannot be changed from a claim under Article 8(1)(b) of the Community Trademark Regulation to one under Article 8(2) at this stage.

On appeal, the CFI overturned the decision. It held that Kaul had not changed the foundation for its opposition at the appeal stage. It had used Article 8(1)(b) as the legal basis for its claim that the CAPOL mark had a high level of distinctive character. The CFI added that, according to case law, the more distinctive an earlier mark, the greater the likelihood of confusion. Therefore, marks with a highly distinctive character, either per se or because of the recognition they achieve on the market, enjoy broader protection than marks with a less distinctive character. It follows that there may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the opposing trademarks, where the goods and services covered by them are very similar, and the earlier mark is highly distinctive (see the Lloyd Schuhfabrik Meyer Case).

As the Board of Appeal had failed to take Kaul's evidence into account, the CFI annulled its decision.

Reinhard Schanda and Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna