30 October 2005

Community Trade Marks: MOBILIX - not even OBILIX could shift this one.

In Case T-336/03, Les Éditions Albert René v OHIM [2005] EUECJ T-336/03 (27 Oct 2005) the Court of First Instance had before it an application for annulment from a disappointed opponent, for a change. The opponent had failed before the Oppositions Division but actually managed to persuade the Board of Appeal to reject the registration in respect of some specified goods.

Background
The mark in question was the word MOBILIX. Orange A/S ought to register that mark in classes 9, 16, 35, 37, 38 and 42 for a large variety of goods and services ranging from telecommunications apparatus and calling cards to answering services and installation services. The opponents, publishers of the well-known "Asterix" books, opposed the application on the grounds of earlier mark under art 8 (1) (b) of the CTM Regulation and earlier mark with a reputation in the Community under art 8 (5). The registration on which they relied was OBILIX which they had registered for a variety of goods in classes 9, 16, 28, 35, 41 and 42.

The Procedure in OHIM
The Opposition Division rejected the opposition on both grounds. On appeal, the Board rejected the application under art 8 (5) but found that there was some degree of similarity between the signs in question and between some goods and services and that there was a likelihood of confusion in the minds of the relevant public in respect of those specified goods and services. It therefore refused the application in respect of signalling and teaching apparatus and instruments and services known as business management and organisation consulting and assistance, consulting and assistance in connection with attending to business duties. However, it granted the application in respect of the remaining goods and services.

The Application for Annulment
Before the Court, the opponents attacked not only the Board's total rejection of its art 8 (5) objection but also its partial acceptance of the art 8 (1) (b) ground. It also tried to raise a new ground, namely that OBELIX was a well known mark within the meaning of art 6bis of the Paris Convention. To bolster its case on art 8 (5) it sought to lodge 5 new documents into evidence which were alleged to show that OBILIX was a well-known mark. As these had not been produced to the Board of Appeal, the Court would not admit that evidence. Nor would it allow the opponents to raise a new ground. The application proceeded on a straightforward comparison of marks and goods under art 8 (1) (b).

The Judgment
The CFI rejected the application. Relying on Case T-162/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 31 to 33, and the case-law cited), it considered the likelihood of confusion "by reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated". While the goods for which the earlier mark was registered were in the same classes as some of those for which registration was sought, there was very little overlap. Accordingly the Court could find no basis upon which to attack the finding of the Board.

Comment
Since Orange A/S, the applicant for registration was a Danish company, it is fitting that the latest Asterix exploit should be Asterix against the Vikings. No doubt the result of that contest with be more favourable for the Gauls. This decision of the CFI was a very thorough judgment which will be hard to fault.

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