Perfume Challenge to Clothing Fails, but Others May Fare Better

Oppositions based on dissimilar goods or services present special challenges. The CFI examined some of those recently when it rejected an appeal by a perfume house opposing a CTM for clothing and leather goods (Mühlens GmbH & Co. KG v OHIM, Case T-150/04). Although the judgment shows that the perfumier in question was clearly off the scent, others may fare better by heeding the Court’s guidance.

TOSCA v TOSCA BLU

Mühlens involved a CTM application for TOSCA BLU for clothing and leather articles in the name of Minoronzoni Srl. Mühlens, a German perfumier, opposed on the basis of unregistered rights in TOSCA for fragrances, soap and the like.

Mühlens claimed that there was a likelihood of confusion under Article 8 (1) (b) CTMR, and that, if the goods were regarded as dissimilar, Mühlens’ mark enjoyed a reputation in Germany and the use of TOSCA BLU would give rise to unfair advantage or detriment to the distinctive character of TOSCA under Article 8 (5) CTMR.

Although OHIM and the Board of Appeal regarded the marks as similar and found that TOSCA was well-known for perfumes in Germany, they rejected the opposition on the grounds that there was no similarity of goods, and therefore no likelihood of confusion. They further held that the opposition under Article 8 (5) was unfounded because that provision required the earlier mark to be registered and therefore did not extend to unregistered marks, however well-known.

Arguments on Appeal

On appeal to the CFI, Mühlens argued that fashion houses often licensed their marks for use in the perfumery field, and that the public was therefore accustomed to seeing the same marks in use for perfumes, clothing and leather goods. All these goods related to image, and were therefore complementary.

Mühlens also argued that Article 8 (5) covered unregistered “well-known” marks, since well-known marks were expressly recognised as “earlier marks” under Article 8 (2) (c). Mühlens further argued that the phrase “for which the earlier mark is registered” in Article 8 (5) was a drafting error, and that the wording intended was, “for which the earlier mark is protected.” It pointed to German national law, which protected well-known marks in respect of dissimilar goods and services, and argued that Community law should be interpreted likewise.

“Aesthetic Complementarity”

On the question of similarity of goods, the CFI was unmoved by Mühlens’ submissions.

It accepted that certain goods, particularly in the fields of fashion and body care, were “aesthetically complementary” in the eyes of the relevant consumer despite having a different nature, purpose and method of use. However, it held that mere “aesthetic complementarity” was not enough to give rise to similarity of goods. A party must prove that there was also “a genuine aesthetic necessity, in that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use these products together… Consumers must consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same” (paras. 36 and 37).

In this case, despite the common relevance of the products to personal image, Mühlens failed to show that perfumery and clothing and leather goods are indispensable or important for each other’s use or that the average consumer would regard the use of the products together as normal and natural. The appeal on similarity of goods therefore failed.

Well-Known Marks and Article 8 (5)

Mühlens could still have prevailed if it had persuaded the CFI that Article 8 (5) extended to well-known unregistered marks. The clear wording to the contrary in the provision, however, meant that this was always an unlikely outcome.

It was no surprise, therefore, that Mühlens’ arguments on this point also failed. The CFI held that well-known marks were indeed recognised as a form of earlier mark for the purposes of Article 8 generally, but that to succeed under its sub-provisions the express requirements of the relevant sub-paragraphs had to be met. In Article 8 (5), one of those requirements was that the earlier mark with a reputation had to be registered.

The CFI saw no divergence between the CTMR and the Paris Convention on this point. It noted that under the Paris Convention, well-known marks were protected against the use of identical or similar later marks for identical or similar goods, where there was a likelihood of confusion. They did not receive extended protection against later marks for dissimilar goods or services of the type accorded by Article 8 (5) CTMR. Therefore, it was not surprising that Article 8 (5) itself did not grant such extended protection to unregistered wellknown marks.

The CFI rejected Mühlens’ assertion that the requirement of registration in Article 8 (5) was a drafting error, and dismissed the suggestion that Community law should be interpreted in accordance with German national law on the extent of protection accorded to well-known marks. In the CFI’s view, the wording of Article 8 (5) was clear, and Mühlens’ case failed to rise to it.

Comment

Mühlens’ appeal may always have been likely to fail in light of the clear wording of Article 8 (5).

There was, however, a credible basis for Mühlens’ challenge. Article 8 (5) refers to goods or services for which the earlier mark is “registered,” but at the same time defines “earlier marks” by reference to Article 8 (2), which includes well-known unregistered marks. The ambiguity had to be resolved, and Mühlens dispels all doubt that a registered mark is needed to succeed in an opposition or invalidation under Article 8 (5).

That an earlier registered mark is required for success, however, does not necessarily mean that it must be registered at the time the opposed application was filed. Since Article 8 (5) defines “earlier mark” by reference to Article 8 (2), which includes pending earlier applications, an Article 8 (5) challenge based on a pending application can still be a winning formula provided the prior application is ultimately registered. Suspension of proceedings may be appropriate in such cases.

On similarity of goods, Mühlens could have attempted to prove that certain items of clothing were normally and naturally used together with perfumes, such as cocktail dresses or ladies’ suits. Whether such an argument would succeed will have to await consideration by another court, but some evidence could have been mustered in support of it and, moreover, common experience points to its accuracy. Without any comparable arguments or evidence, Mühlens were never likely to carry the appeal under Article 8 (2) (b).

The real importance of Mühlens may be in showing how a challenge to a later mark for dissimilar goods or services can succeed where the earlier mark is not registered or has no reputation, or where unfair advantage or detriment cannot be proved. In such cases the concept of “aesthetic complementarity” could be a powerful tool. If it can be shown that goods are normally and naturally used together, even goods that appear different might be brought under the wing of Article 8 (1) (b), requiring only proof of similarity of marks and a likelihood of confusion.

Toothbrushes and toothpaste might be one such example, and the fashion and body care fields, in particular, are full of others. In the wake of this judgment, parties in these fields and others may well see better prospects for defending a broader patch.