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18 January 2006

ARTHUR Case rumbles on

In Sadas SA v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has confirmed that the word mark ARTHUR ET FELICIE was confusingly similar to the stylized mark ARTHUR despite the addition of the separate distinctive forename FELICIE. The history of this case illustrates how many decisions can issue from the same matter and also reflects the evolution of the identical marks provision set out in Article 8(1)(a) of the Community Trademark Regulation.
This case involved the same parties and trademarks as the groundbreaking European Court of Justice (ECJ) decision in the case of LTJ Diffusion SA v Sadas Vertbaudet SA, which confirmed that a sign is identical with a mark for the purposes of Article 8(1)(a) of the regulation:

"where it reproduces, without any modification or addition, all the elements
constituting the trademark or where, viewed as a whole, it contains differences so
insignificant that they may go unnoticed by an average consumer."

The ECJ decision dealt with a reference from a French court, which was considering an infringement action and simultaneous invalidity action against the trademark ARTHUR ET FELICIE based on the earlier French registration for the stylized mark ARTHUR. (For background information on the ECJ's decision, see ECJ interpretation of 'identical' narrows trademark owners' rights.) The CFI decision dealt with an opposition against a Community trademark application for ARTHUR ET FELICIE based on the same earlier French registration.

The CFI's decision is the fifth ruling on this opposition. The OHIM Opposition Division initially held that the marks were neither identical nor confusingly similar. Interestingly, after this decision was appealed to the OHIM Board of Appeal, the French court made the above-mentioned reference to the ECJ in the infringement/invalidity action. The Board of Appeal used its rarely invoked power under Article 11 of Commission Regulation 216/96 to invite the president of the OHIM to comment on a question of general interest, in this case, the scope of the identical marks provision set out in Article 8(1)(a) of the Community Trademark Regulation.
The president stated that only identical marks, with no element being added or omitted, were covered by Article 8(1)(a). The Board of Appeal thus rejected the appeal on the issue of identity, holding that marks will only be identical if "there is an identical reproduction with no element being added, omitted or altered, other than those which are minimal or totally insignificant". However, the appeal was allowed in relation to the Opposition Division's conclusion that the marks were not confusingly similar and the case was remitted on that issue.

The Opposition Division made a further decision on the matter, in which it considered the ECJ ruling on identity and concluded that the marks could still not be regarded as identical. However, in contrast to the first outing before the Opposition Division, this time it held that the marks were confusingly similar and, on appeal, the Board of Appeal agreed. This decision was appealed to the CFI.

The CFI held that in terms of dominance, the words ARTHUR and FELICIE in the application were indistinguishable in principle but that the word ARTHUR was dominant as it was the first element. The stylized ARTHUR mark was held to be visually and aurally similar to the earlier ARTHUR mark despite the additional elements. Conceptual similarity was also held to exist even though ARTHUR ET FELICIE could be regarded as referring to a couple. It was concluded that the additional name FELICIE could give the impression of an extension to or variant of the ARTHUR trademark.

The CFI therefore upheld the Board of Appeal's decision.

Niamh Hall, FRKelly

First published in World Trademark Law Report January 18, 2006

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