With decision dated November 14, 2013 (Case C-383/12 P), the European Court of Justice (“ECJ”) ruled on the risk of dilution as ground for refusal pursuant to article 8(5) of the Regulation no. 207/2009 (“CTMR”).
The dispute focuses on the registration of a figurative trademark constituted by a wolf head, that has been opposed by the owner of the earlier figurative trademarks “wolf jardin” (see comparison hereunder) pursuant to art. 8(5) CTMR.
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The ECJ, as already pointed out with the “Intel Corporation” decision (Judgment of November 27, 2008, Case C- 252/07), stated that:
- the “proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or evidence of a serious likelihood that such a change will occur in the future. Such proof would have to be adduced in order to show dilution of an earlier mark”;
- the burden of proof of such detrimental effect (or of a serious risk thereof) shall be borne by the holder of the earlier trademark.
Furthermore, the ECJ clarified that the concept of change in the economic behaviour of the average consumer has to be proved by identifying objective elements and “cannot be deduced solely from subjective elements such as consumers’ perceptions”. Therefore, “the mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Art. 8(5) CTMR”.