Fir tree figurative mark application cut down by CFI

In L&D SA v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision of the Board of Appeal and has refused to allow the registration of a figurative Community trademark for a stylized fir tree.

On April 30 1996 L&D SA filed an application to register the figurative mark AIRE LIMPIO as a Community trademark in Classes 3, 5 and 35 of the Nice Classification. The mark depicted a fir tree in the form of a humorous cartoon-style character and the words 'aire limpio' (meaning 'clean/fresh air') written in the middle of the character's body.

Julius Sämann Ltd filed a notice of opposition against the registration of the mark based on a number of earlier figurative marks made up of the shape of a fir tree in silhouette, including an earlier Community trademark. Julius Sämann's registrations covered similar goods to those set out in L&D's application.

OHIM's Opposition Division rejected the opposition in its entirety and Julius Sämann appealed.

The OHIM Board of Appeal upheld the appeal and refused to register L&D's mark. Concluding that there was a likelihood of confusion between the marks, the board stated, among other things, that:

• Julius Sämann's earlier Community trademark, as a result of use and the well-known nature of its other earlier marks, had acquired distinctive character; and
  
  
• the conceptual similarity between L&D's mark and Julius Sämann's earlier marks could lead to confusion in those parts of the European Union where Julius Sämann's earlier mark has particular distinctiveness, such as, for example, Italy.

L&D appealed to the CFI, submitting, among other things, that:

• Julius Sämann's earlier mark lacked distinctiveness because the silhouette of a fir tree in general is descriptive of goods such as deodorants and air fresheners, and because the fir tree shape is necessary to obtain the technical results sought by these types of products; and
  
  
• there was no similarity between the marks with regard to their visual, phonetic and conceptual aspects when considering the representation of the cartoon character and the words 'aire limpio' in L&D's mark, and thus no likelihood of confusion between the marks.

With regard to the distinctive character of the earlier mark, OHIM argued that the mark not only amounted to the representation of a fir tree, but constituted a graphic representation of a more complex concept. Furthermore, OHIM argued that in spite of the differences between the marks, mainly caused by the cartoon appearance of L&D's fir tree and the word element, the overall impression was that the marks were identical, and thus could not be disassociated by the ordinary consumer.

The CFI upheld OHIM's arguments and endorsed the decision of the Board of Appeal. It held that Julius Sämann's earlier Community trademark, as a result of the prolonged use and the well-known nature of Julius Sämann's earlier marks, has acquired a particularly distinctive character in parts of the European Union. The CFI noted that the more distinctive the earlier mark is, the greater the likelihood of confusion will be.

With regard to similarity, the court stated that, on a visual and conceptual level, the marks were roughly alike. The CFI noted that the marks differed phonetically since Julius Sämann's earlier mark can be communicated orally only by way of description, whereas L&D's mark can be communicated through its verbal element, 'aire limpio'. However, the CFI held that the similarity in the graphic elements prevailed over the differences in the verbal elements. Thus, the marks were confusingly similar.

Lasse A Søndergaard Christensen and Christian Fleischer Christiansen, Gorrissen Federspiel Kierkegaard, Aarhus