In OHIM v riha WeserGold Getränke C-558/12 P, the Court of Justice of the European Union (CJEU) has held that the enhanced distinctiveness of an earlier mark  is irrelevant where no similarity between marks has been found.


Lidl filed a Community trade mark (CTM) application for the word mark WESTERN GOLD in Class 33 for  “spirits, in particular whiskey”. WeserGold filed an opposition alleging likelihood of confusion  under Article 8(1)(b) of the CTM Regulation (40/94/EC, now 207/2009/EC) with several of its earlier  Community, national and international registrations for the word mark WESERGOLD covering goods in  Classes 29, 31 and 32, including non-alcoholic beverages.

The Opposition Division of the Office of Harmonization for the Internal Market (OHIM) upheld the  opposition. The  First Board of Appeal overturned that decision, finding there was no likelihood of  confusion.

On appeal, the EU General Court held the Board of Appeal had erred in its application of Article  8(1)(b) by failing to uphold its duty to perform a new and comprehensive examination of the merits  of the opposition. Even though WeserGold had not submitted arguments regarding enhanced  distinctiveness before the Board of Appeal, it had referred to this in its written submissions  before the Opposition Division, which indicated that the earlier marks had acquired enhanced  distinctiveness through use. In the General Court’s view, the Board of Appeal had failed to examine  a relevant factor in the global assessment of whether or not there was a likelihood of confusion  and the decision had to be annulled for breaching essential procedural requirements. WeserGold  appealed to the CJEU.


Allowing the appeal, the CJEU stressed that the likelihood of confusion  under  Article  8(1)(b)  presupposed  that  the  mark applied for and the earlier mark were identical or similar, and

that the goods or services applied for were identical or similar to those goods or services for  which the earlier mark was registered. These conditions were cumulative. Where there was no  similarity between the marks, the enhanced distinctiveness of the earlier mark and the identity and  similarity of the relevant goods and services could not result in a finding of a likelihood of  confusion. The enhanced distinctiveness of a mark that was acquired through use, however, had to be  considered when deciding whether or not the similarity between the signs and between the goods or  services created a likelihood of confusion.

The CJEU held the General Court had misinterpreted Article 8(1)(b). Since the General Court had  found the relevant marks were dissimilar, it was unnecessary to consider enhanced distinctiveness.  The General Court had, therefore, erred in law by finding that the Board of Appeal had failed to  uphold its duty to examine the enhanced distinctiveness of the earlier  mark, acquired through use.  Where there was no similarity between the marks, there could not be a likelihood of confusion, and  enhanced distinctiveness of the earlier mark could not offset the lack of similarity between the  respective marks.


A finding of a likelihood of confusion under Article 8(1)(b) presupposes identity or similarity  between the marks and identity or similarity between the goods and/or services. Once it is  established that the marks in question are dissimilar, a likelihood of confusion becomes  impossible. It is, therefore, unnecessary to consider the enhanced distinctiveness of the earlier  mark.

Conversely, where the marks are found to be similar and the goods and/or services are identical or  similar, enhanced distinctiveness of the earlier mark is one factor to examine in the global  assessment for determining whether or not there is a likelihood of confusion.