News

Undiluted: CJEU Critical of General Court’s Decision in Wolf Trade Mark Battle

13 March 2014

In 2012, we commented on the impact of the decision of the General Court in Environmental Manufacturing LLP v OHIM & Société Elmar Wolf . This decision was subsequently appealed to the Court of Justice of the European Union (“CJEU”), which made its decision on the merits of the appeal on 14 November 2013 (Case C-383/12 P). The CJEU annulled the decision of the General Court and clarified what is required to prove detriment to the distinctive character of an earlier mark in trade mark opposition proceedings.

The settled case law of the CJEU states that, for such detriment to be claimed, evidence of a change in the economic behavior of the average consumer of the goods or services at issue must be shown. In its decision, the General Court noted that the Opponent, Elmar Wolf, was able to rely on future risk of detriment, without providing any factual indications as to how this may occur. The CJEU has now clarified that more than this is required for a finding of detriment to be made.

To rely on detriment to reputation as a ground of opposition, evidence showing an actual change in the economic behavior of consumers must be provided, or evidence that there is serious risk of such change occurring. The CJEU decided that the General Court had erred in law and has referred the case back to the General Court for its final decision on this matter. This should signify a return to the settled case law in this area.

This trade mark dispute has been running since 2006. The final decision from the General Court will be eagerly awaited.

Mark Caddle
Trade Mark Group