On 7 November 1997, the mobile phone operator Orange filed an application with the Office of Harmonization for the Internal Market for registration of the word "MOBILIX" as a Community Trade Mark ("CTM"). Les Éditions Albert René ("René"), the proprietor of the existing trade mark "OBELIX" (of Asterix cartoon fame), opposed the registration on the basis that there was a likelihood of confusion within the meaning of Article 8(1) (b) and (2) of the Community Trade Mark Regulation, 40/94.
The Opposition Division rejected the opposition, considering that it had not been conclusively demonstrated that the earlier trade mark was well known and found that, overall, the trade marks were not similar. There was a certain aural similarity but this was counteracted by the visual appearance and the very different concepts they express – mobile phones in the case of "MOBILIX" and obelisks in the case of "OBELIX".
René appealed. On 14 July 2003 the Fourth Board of Appeal annulled part of the Opposition Division's decision, finding that:
- the opposition should be regarded as being based exclusively on likelihood of confusion;
- it was possible to detect a certain similarity between the trade marks; and
- certain of the goods and services were also similar.
The Board said that given the degree of similarity between the signs and the goods/services, there was a likelihood of confusion in the mind of the relevant public in relation to those goods/services that were found to be similar. The Board granted the trade mark application in respect of all other goods/services. Yet again, René appealed.
The Court of First Instance ("CFI") handed down judgment on 27 October 2005. It found that:
- the new plea raised by René under Article 8(5) (on the basis that the trade mark "OBELIX" has a reputation in the Community and the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark) is inadmissible as it was not raised before the Board of Appeal;
- the plea under Art 74 that the "OBELIX" mark had a reputation was unfounded – both the Opposition Division and the Board of Appeal considered that René had not substantiated conclusively on the facts or evidence that it was well known and highly distinctive;
- in relation to similarity of the marks, as a consumer's attention is usually directed to the beginning of the word, the signs in question are not visually similar or that, at most, they are visually very slightly similar;
- the signs have a certain aural similarity, but on a conceptual level the word "OBELIX" would readily be identified by the average member of the public with the popular character from the comic strip, which makes it extremely unlikely that there could be any confusion in the public mind and, as such, it would counteract any aural or visual similarities;
- the fact that the mark applied for has the "IX" prefix does not mean that "MOBILIX" will insinuate itself into the "Asterix" family of trade marks – René cannot claim an exclusive right to use the "IX" suffix.
In its appeal to the European Court of Justice (ECJ), only two of René six grounds of appeal were based on substantive law, and the Advocate General responded to them as follows:
- the CFI was justified in considering, without erring in law, that the goods and services covered by the "MOBILIX" trade mark are not similar to the services designated by the "OBELIX" sign. Further any argument that the CFI was wrong to conclude that the conceptual differences between "OBELIX" and "MOBILIX" counteracted any aural or visual similarity must be rejected by the ECJ – to do otherwise would be to reassess the findings of fact made by the CFI; and
- the assessment of the plea under Art 74 that the sign "OBELIX" is well-known is a factual one which, save where the facts or evidence are distorted, is not subject to review by the ECJ on appeal, and there is no such evidence of distortion in this case such a plea must be rejected.
This Opinion, if followed by the ECJ, serves as a useful reminder that the role of the ECJ as the final court of appeal from decisions of the Office for Harmonization in the Internal Market is only to assess errors in law. If an appeal boils down to a request that the ECJ reassess the factual findings of the CFI, it should be rejected however determined the appellant may happen to be.