Environmental Manufacturing LLP ("EM") v OHIM; Société Elmar Wolf* (CJ (Fifth Chamber); C-383/12 P; 14.11.13)
The CJ upheld EM's appeal, setting aside the decision of the GC to uphold the BoA's finding that the mark applied for by EM might dilute Elmar Wolf's earlier marks. The CJ held that it was necessary for Elmar Woof to show the economic effects between the marks at issue.
EM applied to register as a CTM a figurative sign representing a wolf's head for the following goods in Class 7: "Machines for professional and industrial processing of wood and green waste; professional and industrial wood chippers and shredders". The mark applied for is shown below:
Click here to view mark.
Elmar Wolf opposed EM's application on the basis of (among other grounds) Article 8(5), in respect of its earlier French and international word and figurative trade marks, including the following:
Click here to view mark.
On appeal by EM from the decision of the BoA, the GC held that the BoA had correctly found that the relevant public might establish a link between the sign applied for and the marks asserted. In respect of the risk of dilution, the GC found that the requirement for a change in the economic behaviour of the consumer (established in Intel Corporation (Case C-252-07)), was satisfied if the proprietor of the earlier mark showed that the mark's ability to identify the goods and services for which it was registered and used as coming from the proprietor was weakened, since use of the later mark would lead to dispersion of the identity and hold upon the public mind of the mark.
In upholding EM's appeal, the CJ held as follows:
- According to the case law of the CJ, proof that the use of the later mark was, or would be, detrimental to the distinctive character of the earlier mark required evidence of a change in the economic behaviour of the average consumer of the goods and services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change would occur in the future. Without adducing evidence that that condition was met, the detriment or risk of detriment to the distinctive character of the earlier mark could not be established.
- In dismissing the assessment of this condition, the GC had erred in law.
- To accept the criterion put forward by the GC without demanding the higher standard of proof required by the CJ in Intel could lead to a situation in which economic operators improperly appropriated certain signs, which could damage competition.
- The concept of 'change in the economic behaviour of the average consumer' laid down an objective condition which could not be deduced solely from subjective elements such as consumers' perceptions. Evidence of actual detriment was not required, but evidence of a serious risk of such detriment, allowing the use of logical deductions, could suffice. However, such deductions could not be the result of mere suppositions but had to be founded upon an analysis of the probabilities and by taking into account the normal practice in the relevant commercial sector as well as all the other circumstances of the case.
- The appeal was well-founded and the case would be referred back to the GC.