ECJ decision in OHIM v WeserGold: distinctive new heights?

The Court of Justice of the European Union (ECJ) has unsurprisingly found that distinctiveness - enhanced or otherwise - is not relevant to the assessment of likelihood of confusion between dissimilar trademarks.

The ECJ issued its decision in Office for Harmonisation in the Internal Market v riha WeserGold Getranke GmbH & Co KG (Case C-558/12 P) without an opinion, which perhaps speaks volumes on the case before it. In this case, OHIM requested that the General Court’s decision (Case T-278/10) be set aside.  The General Court had annulled a decision of the Board of Appeal in the opposition proceedings. 

In 2006 Lidl Stiftung & Co KG, the supermarket operator, applied for the registration of the Community trademark (CTM) WESTERN GOLD in Class 33 of the Nice Classification. The mark was opposed by WeserGold Getrankeindustrie GmbH & Co KG on the basis of, among other rights, a CTM registration for WESERGOLD in Classes 29, 31 and 32. The mark had been registered in 2005 (ie, it was within the five-year grace period). WeserGold relied on Article 8(1)(b) of the Community Trademark Regulation (40/94) (now Article 8(1)(b) Community Trademark Regulation (207/2009)). The Opposition Division of OHIM upheld the opposition and rejected the application, limiting, for reasons of procedural economy, its examination of the opposition to the CTM – for which proof of genuine use was not required. 

Lidl appealed. The First Board of Appeal of OHIM found that the marks in question had a medium degree of visual and phonetic similarity, but that there was no conceptual similarity. The board also noted that WESERGOLD had a slightly lower than average distinctiveness, owing to the element 'gold', which has low distinctiveness. It considered that there was a low degree of similarity with the Class 33 goods of the earlier mark and that, overall, there was no likelihood of confusion.

WeserGold appealed to the General Court. The General Court agreed with the overall comparison and  found that the marks were dissimilar. However, the court differed from the Board of Appeal’s approach on the question of distinctiveness, one of the points in dispute. WeserGold had not expressly repeated its distinctiveness arguments in the appeal, but had referenced the opposition submissions and evidence.   

The General Court annulled the Board of Appeal decision, holding that the board had failed to examine a “potentially relevant factor in the global assessment” as to likelihood of confusion since it had not examined all the arguments put forward at opposition level, including the evidence of acquired distinctiveness. According to the court, the board had failed in law and fact.

OHIM appealed the General Court's decision and asked that it be put aside.

Unsurprisingly, the ECJ agreed with OHIM and upheld the Board of Appeal’s decision in law and fact. It ruled that the General Court had found the marks dissimilar overall and, therefore, likelihood of confusion had to be ruled out. Further, “well-established” case law, including Calvin Klein Trademark Trust v OHIM (Case C-254/09 P), had found that possible enhanced distinctiveness through use could not offset the dissimilarity between marks. Kaul v OHIM (Case C-193/09 P) also established that, in some cases, an opposition based on Article 8(1)(b) could be rejected simply on an examination of the marks in question without a consideration of (possible) high distinctiveness of an earlier mark. 

Article 8(1)(b) is clear that there has to be identity or similarity between the earlier mark and the mark applied for. Save for the initial decision by the Opposition Division, all other decisions found dissimilarity between the marks and, therefore, no likelihood of confusion. If there is no identity or similarity between the marks in issue, a finding of likelihood of confusion is impossible, irrespective of whether the earlier mark has enhanced distinctiveness.

Nick Bolter and Claire Lehr, Edwards Wildman Palmer UK LLP, London