Claude Ruiz-Picasso and ors v OHIM; DaimlerChrysler AG (ECJ; C-361/04 P; 12.01.06)
The ECJ dismissed the appeal, holding that none of the pleas in law regarding Art. 8(1)(b) were well founded. The CTM applied for was the word PICARO, for vehicles and parts therefore in Class 12. The appellants objected on the basis of likelihood of confusion with the word mark PICASSO, registered for vehicles in class 12. The Opposition Division rejected the opposition and the BoA dismissed the subsequent appeal. The CFI, in turn, upheld the BoA’s decision that there was no likelihood of confusion.
The ECJ held that, in finding that the meaning of the PICASSO mark was clear and specific so that it could be grasped immediately by the relevant public, and that therefore the conceptual differences counteracted the visual and phonetic similarities, the CFI had not erred in law.
The ECJ found that the CFI had considered whether the earlier mark was highly distinctive per se. The ECJ noted that the CFI had then concluded, after an appropriate factual assessment, that it was not with respect to motor vehicles. Thus the CFI had considered, contrary to the appellant’s claim, the rule whereby the greater a mark’s distinctive character, the broader protection it enjoys.
The appellants contested that the CFI’s approach to likelihood of confusion was too restrictive since it had considered the level of attention at the point of purchase only. However, the ECJ concluded that the CFI was entitled to hold that the possibility that consumers may see the goods and mark in question in circumstances unrelated to any sale (and display a low level of attention), did not prevent the court from taking into account the particularly high level of attention given by consumers at the time of purchase.
The ECJ also rejected the claim that the CFI’s conclusions meant that the court had held that the concept of likelihood of confusion was to be interpreted differently for the purposes of opposition proceeding or infringement proceedings.
Elizabeth Emanuel v Continental Shelf 128 Ltd (AG Ruiz-Jarabo Colomer; C-259/04; 19.01.06)
In AG Ruiz-Jarabo Colomer’s opinion, a trade mark which incorporated the designer’s name had not become deceptive because the designer no longer worked for the trade mark owner, even though the public may believe that she still did.
In 1997, the designer of the late Princess Dianna's wedding dress, Elizabeth Emmanuel, registered a device mark which included her personal name, Elizabeth Emmanuel. Subsequently the British designer assigned her business which included the trade mark and goodwill to Frostprint Ltd.
In 1999, Mrs Emanuel issued opposition and revocation proceedings against the registered mark on the basis of Articles 3(1)(g) and 12(2)(b) of the Directive.
On appeal the Appointed Person (David Kitchin QC, O-17-04) stayed the proceedings and for the first time referred some questions to the ECJ regarding the interpretation of the above mentioned articles.
In the AG’s opinion, Article 3 (1)(g) of the Directive ought to be interpreted as meaning that a sign comprising a proper name, assigned together with the goodwill of which it formed part, did not deceive the public, even if it evoked the mistaken impression that the designer was still involved in the design and creation of the goods for which it was registered.
Similarly, the mere use of the registered mark did not deceive the public within the meaning of Article 12(2)(b) of the said Directive. It was for the national judicial authority to consider each particular feature of a case in evaluating the influence which the use of that mark may have had on the impression received by the public. In any case, in his opinion the average consumer is taken to know that designers may come and go and that trade marks may be bought and sold.
Koninklijke Philips Electronics N.V. v. Remington Consumer Products Ltd & Anr (Mummery, Neuberger & Lloyd LJJ;  EWCA Civ 16; 26.01.06)
The Court of Appeal (Mummery LJ giving judgment) dismissed the appeal from the decision of Rimer J ( EWCH 2327(Ch)) in relation to the 452 mark registered in Class 8 in respect of electric shavers (depicted below). It was invalid under Section 3(2)(b). There was not need for a reference to the ECJ.
The only material difference between this and the 208 mark (depicted above) which had been the subject of previous litigation (see judgment of Jacob J.  RPC 283, Court of Appeal  RPC 809 and ECJ  RPC 2) was that this mark had an inner line depicting a face plate of a clover leaf design rather than a plain, raised triangular face plate. The embellishment of the faceplate with clove leaf design was key to Philips’ case.
The Court of Appeal held that Rimer J had applied the right test when deciding that the clover leaf was not an essential feature of the shape of the goods. The Court of Appeal held that the important factor was the impact of the mark on the eye of the average consumer who would not dissect and examine each feature of the mark.The question was essentially one of fact and degree for the judge to decide. In this case, the evidence had not persuaded Rimer J that the presence of the clover leaf had a distinctive eye impact on the average user of shavers.
From there, Rimer J could have taken the short cut that the 452 mark was essentially the same as the 208 mark and therefore invalid. However, the Court of Appeal commended the fact that he did not. He went on to hold that the face plate of the 452 mark as a whole, of which the clover leaf formed part, was attributable solely to the technical result. In doing so, he rejected Philips’ submission that the use of the word “only” in paragraph 86.4 of the ECJ’s judgment meant that Section 3(2)(b) applied only if all essential features of the shape were only attributable to a technical result. The Court of Appeal held that Rimer J was right to reject the Philips submissions. Fragmentation of a mark was not the proper approach; a mark should be considered as a whole for both distinctiveness and functionality. That was how the relevant section of the public would perceive it. The Court of Appeal also dismissed a finding of fact in relation to the lower residual areas; as with the clover leaf, the judge was entitled to find that they were attributable to the technical result.
Rimer J had also held, with a degree of hesitation, that the three device marks depicted below were invalid under Section 3(2)(b). The Court of Appeal allowed the appeal. All three images had eye appeal, being of an abstract, non-technical and non-functional nature. They are none of them a “shape of the goods”. The Court of Appeal also overturned Rimer J in holding that the marks were not precluded from registration by Sections 3(1)(b) and (c).
Levi Strauss & Co v Casucci SpA (AG Ruiz-Jarabo Colomer; C-145/05; 17.01.06)(decision not yet in English)
Levi Strauss brought an action against Casucci in Belgium for infringement of its ‘mouette’ figurative trade mark, consisting of a double row of stitching curved in the middle and sewn onto a five sided pocket for jeans. In 1997, Casucci SpA began marketing jeans with five-sided rear pockets also having a double stitch curving slightly upwards in the middle.
Levi Strauss brought proceedings in Belgium on the basis of Article 5(1)(b) of the Directive. The action failed at first instance and at appeal. Levi Strauss further appealed to the Cour de Cassation, the highest court in Belgium, which made a reference to the ECJ.
The AG stated in his opinion that likelihood of confusion between marks should be assessed from the time the allegedly infringing mark comes on to the market. The perception of the average consumer played a major role in determining likelihood of confusion and was particularly important when assessing distinctive character. The AG noted that the public’s perception of marks could alter over time, particularly as a result of the actions of other suppliers of goods and services.
In the present case it was important to determine when the national court must assess likelihood of confusion, because it had been agreed that the ‘mouette’ mark had lost its distinctive character at the time of the appeal. The AG reiterated that the essential function of trade marks was to guarantee their origin and a mark which had lost its distinctive character, could no longer do this. Furthermore, if a trade mark had lost its distinctive character due to the acts or omissions of the proprietor of the mark, then such a mark was susceptible to annulment.
Form of injunction