No likelihood of confusion between MOBILIX and OBELIX
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In Les Éditions Albert René Sarl v Office for Harmonization in the Internal Market (OHIM) (Case C-16/06 P, December 18 2008), the European Court of Justice (ECJ) has held that there was no likelihood of confusion between the mark MOBILIX and the earlier mark OBELIX.
On November 7 1997 Orange A/S filed an application for the registration of the mark MOBILIX as a Community trademark (CTM) under the Community Trademark Regulation (40/94) for various goods and services in the following classes of the Nice Classification:
- Class 9 (including "apparatus, instruments and installation for telecommunication");
- Class 16 ("telephone calling cards");
- Class 35 (including "telephone answering service, business management and organization consulting and assistance, consulting and assistance in connection with attending to business duties");
- Class 37 ("telephone installations and repairs, construction, repairs, installation");
- Class 38 (including "telecommunications information, telephone and telegraph communications, communications through computer screen and cellular telephones"); and
- Class 42 (including "scientific and industrial research, engineering").
Les Éditions Albert René Sarl opposed the application based on its earlier CTM OBELIX, which is registered for various goods and services in Classes 9, 16, 28, 35, 41 and 42 (including "film presentation, film production, film rental, publication of books and magazines; education and entertainment, organizations and presentations of displays and exhibitions, public entertainment, amusement parks").
On May 30 2002 the Opposition Division of OHIM rejected the opposition and authorized the continuation of the procedure for the registration of MOBILIX. The Opposition Division held that although there was a certain aural similarity between the two trademarks, it had not been conclusively demonstrated that the earlier trademark was well known among the public and that the two trademarks were similar overall. Moreover, the Opposition Division stated that the earlier registration was associated with the famous Obelix character from the Asterix comic strip series. Therefore, the earlier mark differed from the trademark applied for from a conceptual point of view.
The Board of Appeal of OHIM partially annulled the decision of the Opposition Division on the grounds that, given the degree of similarity between the signs in question and between the relevant goods and services, there was a likelihood of confusion in the minds of consumers. Therefore, it rejected the application for the registration of MOBILIX in respect of goods in Classes 9 (in particular, “signaling and teaching apparatus and instruments”) and 35 (“business management and organization consulting and assistance”). The application was accepted in respect of the remaining goods and services.
Les Éditions Albert René appealed to the Court of First Instance (CFI). The CFI concluded that the conceptual differences between OBELIX and MOBILIX were sufficient to counteract the aural similarities and any visual similarity between the marks. Therefore, from the point of view of the relevant public, the two signs had a clear and specific meaning.
Regarding the likelihood of confusion between the marks, the CFI considered that under Article 8(1)(b) of the regulation, the goods or services covered by the marks were neither identical nor similar. Moreover, after a detailed evaluation of the relationship between the two signs, the CFI stated that even where a trademark is identical to a highly distinctive sign, it is still necessary to demonstrate the similarity of the goods and services covered.
Les Éditions Albert René appealed to the ECJ, criticizing the CFI for having applied the ‘counteraction’ theory. According to Les Éditions Albert René, that theory is applicable only in the final evaluation of whether there is a likelihood of confusion, and not where the conflicting marks are similar either visually or aurally, or visually and aurally.
The ECJ held that:
"the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning."
The ECJ thus dismissed the action in its entirety and ordered Les Éditions Albert René to pay the cost of the proceedings.
Margherita Bariè and Pietro Pouchè, Carnelutti Studio Legale Associato, Milan
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