(AG Trstenjak for the ECJ; C-16/06 P; 29.11.07)

Orange had applied to register the mark MOBILIX as a CTM for telecommunications related goods and services in classes 9, 16, 35, 37, 38 and 42.

Les Éditions Albert René SARL’s (“LEAR”), the owner of the CTM, OBELIX, registered for goods and services in classes 9, 16, 28, 35, 41 and 42, opposed the application, submitting that there was a likelihood of confusion between the two marks.

LEAR appealed the CFI’s decision to allow the registration of MOBILIX and submitted six grounds of appeal (all rejected by the AG) including, inter alia:

Article 8(1)(b): Similarity of the marks, goods and services

The AG rejected as unfounded LEAR’s submission that the CFI had erred in law by applying an incorrect legal criteria or no legal criteria but merely a line of argument containing contradictory assertions. The CFI had not made an error in law in its finding, based on detailed analysis, that the goods and services covered by the mark applied for were not similar to those designated by the existing mark. The AG concluded that the ECJ had no authority to challenge the CFI’s findings of fact and evidence.

Article 74: ‘OBELIX’ was well known and was of a highly-distinctive character

The AG considered that the CFI was entitled to reach the decision that ‘OBELIX’ was neither well-known nor distinctive. As there was no evidence of distortion in this case, LEAR could not appeal on this ground because it was not a point of law but of fact.

Referral of the case back to the BoA

The AG found that the CFI had been entitled to reject LEAR’s reformulation of the order seeking referral back to the BoA. LEAR was attempting to change the subject matter of the proceedings by submitting a new head of claim in the alternative and asking for directions to be issued to OHIM. The CFI was not entitled to issue directions to OHIM. Instead, OHIM should draw the appropriate inferences from the operative parts of the CFI judgment.