A figurative mark can acquire a distinctive character through use as part of another mark, the ECJ has ruled.
The ECJ's decision concerned an unsuccessful application to register (as a Community trade mark) a cartoon character in the shape of a fir tree, which also contained some word elements. The ECJ ruled that it was likely to be confused with an existing Community trademark consisting of a fir tree silhouette. However, any confusion would be due to the distinctiveness of the silhouette, which arose as a result of its prior use in more complex marks with a word element that were well known in Italy.
Where a mark contained both word and figurative elements, it should not automatically be assumed that the words were the dominant element: similarity (and the possibility of confusion) would also arise where the figurative element was particularly distinctive.
Law: case C-488/06 P, L & D v OHIM
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 12/01/2009.