Opinion of the Advocate-General

Community legislation

5. In so far as is relevant, Article 8 of the Regulation provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

(b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark …:

(i) Community trade marks;

(ii) trade marks registered in a Member State …;

(iii) trade marks registered under international arrangements which have effect in a Member State;

…’

Procedure

10. Registration was requested for, in particular, Classes 3 and 5 of the Nice Agreement (6) covering, respectively, perfumery and essential oils, and scented air freshener products.

11. On 29 September 1998, Julius Sämann Ltd (‘Sämann’) filed a notice of opposition to the requested registration, on the basis of a number of earlier trade marks.

12. Those earlier trade marks included Community figurative trade mark No 91 991, lodged on 1 April 1996 and registered on 1 December 1998 for goods in Class 5 of the Nice Agreement, shown below. I shall refer to it as ‘the silhouette mark’.

14. OHIM’s opposition division rejected the opposition. It compared the Aire Limpio mark with the silhouette mark. It found that the goods in classes 3 and 5, in respect of which the application was made, were identical or very similar to those in class 5 covered by the silhouette mark. It then considered whether the similarity between the marks was sufficient to give rise to a likelihood of confusion. It took the view essentially that the form of a pine or fir tree (or any other tree, fruit or flower) was not particularly distinctive with regard to perfumery or air fresheners, but was even generic or descriptive and thus could not be monopolised by a single trader. There were significant graphic and verbal differences between the two marks and the strongly distinctive differences outweighed the weakly distinctive similarities, creating an overall impression that was sufficiently different to rule out any likelihood of confusion or association. Having reached that view, the opposition division did not consider it necessary to examine in detail any of the other earlier marks relied upon, which displayed even greater differences vis-à-vis the Aire Limpio mark than did the silhouette mark. (9)

15. Sämann contested that decision before OHIM’s Second Board of Appeal, which took a different view of the likelihood of confusion. (10)

16. Accepting the undisputed similarity between the goods concerned, the Board of Appeal focussed its assessment of likelihood of confusion on the Aire Limpio and silhouette marks, and ‘not on all the earlier marks relied upon’ by Sämann. It did so ‘for the same reasons of economy’ as those given by the opposition division, because the silhouette mark was ‘representative’ of the other marks and because it was the mark examined by the opposition division. (11)

17. It found that both marks were made up of a fir tree with branches formed by protrusions and indents on the sides and a short trunk on top of a wider base, but that the silhouette mark was a true silhouette whereas the Aire Limpio mark was an outline containing other elements. The question was therefore whether the differences were sufficient to rule out a likelihood of confusion, and the answer depended, decisively, on the distinctiveness and reputation of the earlier mark. (12)

18. The Board recalled that conceptual similarity can lead to likelihood of confusion, in particular where the earlier mark has a particularly distinctive character, either per se or because it is well known to the public. To determine whether the latter condition is fulfilled, all the relevant facts must be taken into consideration, in particular the market share held by the mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. (13)

19. The evidence showed that over 45 million of Sämann’s car air fresheners were sold each year, and that they had an estimated market share of over 50% in Italy, where the earlier mark had been protected, in the essentially identical form of the CAR-FRESHNER mark, since 1954 and where more than ITL 7 billion had been spent on advertising in 1996 and 1997. The prolonged use and reputation, in Italy, of the ‘earlier mark’ gave that mark a particularly distinctive character, at least in Italy, ‘even if it did not have that character per se, as was found in the contested decision, a finding which is also questionable, since the shape of a tree in general is one thing and the shape of a fir tree is another’. (14)

21. The Board of Appeal therefore annulled the opposition division’s decision in part, and refused registration of the Aire Limpio mark for goods in classes 3 and 5. (16)

22. L & D applied to the Court of First Instance for annulment of the Board of Appeal’s decision. It alleged infringement of Articles 8(1)(b) and 73 of the Trade Mark Regulation. The Court of First Instance however dismissed the action. (17)

The judgment under appeal

Alleged infringement of Article 8(1)(b)

23. The Court of First Instance decided that the rule in Article 7(2) of the Regulation should apply by analogy to the relative grounds of refusal in Article 8. (18) It then noted that the Board of Appeal’s conclusion that the conflicting marks were conceptually similar and that there was a likelihood of confusion followed from its finding that the silhouette mark had a particularly distinctive character in Italy. That finding was based in turn on the acceptance of the prolonged use and wide reputation in Italy of the ARBRE MAGIQUE mark having the same shape of a fir tree and an additional word element. It was therefore necessary to determine whether that latter finding was correct, in particular whether it was possible to hold that the silhouette mark had been able to acquire a particularly distinctive character owing to the use of the ARBRE MAGIQUE mark. (19)

24. The Court considered that a mark may acquire distinctive character as a result of its use as part of another registered trade mark if, in consequence of such use, the relevant class of persons perceives the product or service designated by the marks as originating from a given undertaking. (20) The Board of Appeal rightly took the view that the silhouette of a fir tree, which played a significant or even predominant role in the ARBRE MAGIQUE mark, corresponded to the silhouette mark. It was thus entitled to hold that the silhouette mark constituted part of the ARBRE MAGIQUE mark. Since it could have acquired distinctive character through use as part of the ARBRE MAGIQUE mark, the Board of Appeal was right to examine evidence relating to the use and reputation of the ARBRE MAGIQUE mark in order to establish the prolonged use, reputation and distinctive character of part of it, namely the silhouette mark. (21)

25. The Board of Appeal’s conclusion from the evidence – that, as part of the registered ARBRE MAGIQUE mark, the silhouette mark was the subject of prolonged use in Italy, was well known there and therefore had a particularly distinctive character – was also correct. It was based on ‘the fact that annual sales of the goods marketed under that mark exceed 45 million units and sales in Italy thus represented a market share exceeding 50% in 1997 and in 1998’, and on advertising expenditure in Italy of over ITL 7 billion in 1996 and 1997. The fact that the figures covered periods subsequent to the filing of the application for the Aire Limpio mark did not invalidate them. Data subsequent to the filing of an application can be taken into account where it can be used to draw conclusions on the situation as it was on that date. (22) A market share of 50% in 1997 and 1998 could have been acquired only progressively. The Board of Appeal therefore did not err in holding that the situation was not appreciably different in 1996. (23)

26. Although it had been held that distinctive character cannot be shown to exist solely by reference to general, abstract data, such as predetermined percentages, (24) that case-law concerned the question whether a mark which is the subject of an application for registration has acquired distinctive character and not whether a registered mark which has already acquired distinctive character is well known. In any event, the Board of Appeal also took account of the undisputed prolonged use of the ARBRE MAGIQUE mark. (25)

27. Nor did the Board of Appeal wrongly rely on the fact that the earlier mark had had protection in an essentially identical form since 1954, as the CAR-FRESHNER mark, without any proof as to its use since its registration. It relied on the established use in Italy of the ARBRE MAGIQUE mark, not the CAR-FRESHNER mark. Although its decision states that the CAR-FRESHNER mark had been registered since 1954, as regards prolonged use it refers to the ARBRE MAGIQUE mark. The Board of Appeal was thus correct in holding that the prolonged use and reputation of the ARBRE MAGIQUE mark, and consequently of the silhouette mark, in Italy, which were perceived as indicating the origin of the goods from a specific undertaking, were sufficiently proven and in finding that the silhouette mark had a particularly distinctive character in Italy. (26)

28. Next, having noted that it was common ground that the goods in question were similar, (27) the Court of First Instance examined the similarity of the marks. It considered that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. (28)

29. On a visual level, the graphic element in the Aire Limpio mark was dominant in the overall impression and prevailed over the rather indistinct verbal element, with its small characters placed inside the fir tree. The overall impression was not of a comical character but of an image resembling a fir tree. The face and arms were integrated into the central part of the tree and the two shoes formed a base. The comical, animated appearance of the character gave a fanciful impression to that representation, and the mark could be regarded by the public as an amusing and animated variant of the silhouette mark. It was made up of a sign, the predominant element of which was a silhouette resembling a fir tree, the essence of the silhouette mark. That dominant element would mainly be perceived by the consumer and would determine his choice, particularly for everyday articles sold on a self-service basis. (29)

30. On a conceptual level, the signs in question were both associated with the silhouette of a fir tree. In view of the impression given and the fact that the expression ‘aire limpio’ had no particular meaning for the Italian public, the Board of Appeal was entitled to hold that they were conceptually similar. On a phonetic level, there was a difference because the silhouette mark could be transmitted orally by way of a description, whereas the Aire Limpio mark could be expressed orally by reading out its verbal element. (30)

31. As regards likelihood of confusion, the Court of First Instance first recalled the case-law to the effect that such likelihood exists if the relevant public might believe that the products in question come from the same undertaking, or from economically-linked undertakings. The assessment must be global, on the basis of the public’s perception of both signs and products, taking account of all relevant factors, including the interdependence between similarity of the signs and similarity of the products. As regards similarity between signs, it must be based on the overall impression given, bearing in mind the signs’ distinctive and dominant components. The more distinctive the earlier mark, the greater the likelihood of confusion. Conceptual similarity resulting from the use of images with analogous semantic content may thus give rise to likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public. (31)

32. Given that the goods in question were in everyday use, the relevant public was the average consumer who, although deemed to be reasonably well informed, observant and circumspect, would not pay particular attention at the time of purchasing such goods. He would normally choose the goods himself and would tend to trust mainly the image of the mark applied to them, namely the silhouette of a fir tree. Consequently, in view of, first, the similarity of the goods and the visual and conceptual similarity of the marks and, second, the fact that the earlier mark had a particularly distinctive character in Italy, the Board of Appeal did not err in finding that there was a likelihood of confusion. (32)

33. The Court of First Instance then dismissed a number of L & D’s arguments.

34. The argument that the silhouette mark had weak distinctive character because its shape was descriptive of the goods in question was unfounded. The silhouette mark was not a faithful representation of a fir tree but stylised, with a very short trunk on a rectangular base, and had acquired a particularly distinctive character. Reference in that regard to United Kingdom Patent Office guidelines was irrelevant because the Community trade mark regime is autonomous and applies independently of any national system. And the argument that the silhouette mark should not have been registered, because it was essentially only the shape of the product and because that shape was necessary to obtain the technical result sought by the product could not, as an absolute ground for refusal precluding valid registration of a sign, be raised in opposition proceedings. (33)

Alleged infringement of Article 73

35. L & D had argued that the grounds of the Board of Appeal’s decision concerned earlier marks which the Board had itself excluded from the comparative analysis in order to determine the existence of a likelihood of confusion.

36. The Court of First Instance noted that the statement of reasons required by Article 73 must show the reasoning clearly and unequivocally, the purpose being both to allow interested parties to know the justification for the decision in order to protect their rights, and to enable the Community judicature to review its legality. (34) In addition, decisions of OHIM may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That relates both to factual and legal reasons and to evidence. However, the right to be heard extends only to the factual and legal factors on which the decision is based, not to the final position which the authority intends to adopt. In the present case, the Board of Appeal’s decision showed its reasoning clearly and unequivocally. L & D had an opportunity to present its comments on all the factors on which the decision was based and on the use by the Board of Appeal of the evidence relating to the use of the earlier marks. (35)

37. The Court of First Instance therefore dismissed the action and ordered L & D to pay the costs. L & D has appealed against that judgment.

Assessment of the appeal

Introduction

38. L & D asks the Court to quash the judgment of the Court of First Instance in its entirety, to annul the Board of Appeal’s decision in so far as it partly annuls the opposition division’s decision, refuses registration of the Aire Limpio mark for goods in classes 3 and 5 and orders the parties to pay their own costs, and to order OHIM to pay all the costs. OHIM and Sämann ask the Court to dismiss the appeal and order L & D to pay the costs.

39. In support of its appeal, L & D submits that the Court of First Instance infringed, first, Article 8(1)(b) of the Regulation, in finding (i) that the silhouette mark had acquired a distinctive character, (ii) that the marks in issue were similar and (iii) that there was a likelihood of confusion, and, second, Article 73, in basing its assessment on evidence relating to marks other than the silhouette mark.

41. It is of course true that assessment of the likelihood of confusion or association between two marks is a factual matter, to be based on what is likely to be the overall impression of the relevant average consumer. It necessarily includes a subjective element, so that there will always be some scope for disagreement.

42. In an appeal, the Court of Justice must ignore any perception that the likelihood of confusion may have been more accurately assessed on the facts by the opposition division, by the Board of Appeal or by the Court of First Instance, as the case may be. It must confine its review to points of law: lack of competence of the Court of First Instance, breach of procedure before it or, most importantly, infringement of Community law by the Court of First Instance. (36)

43. The Court’s review is also, in principle, confined to an examination of the grounds of appeal raised before it – in the same way as the role of the Court of First Instance is in principle limited to examining the pleas of the parties – unless there is a question of public policy which it should raise of its own motion.

44. I shall examine L & D’s arguments in turn below, in accordance with those principles. However, it may be helpful first to highlight the uncertainty (to which I shall return in greater detail when examining the ground of appeal relating to breach of the obligation to state adequate reasons) as to precisely which marks were considered as forming the basis of the comparison by the Board of Appeal and by the Court of First Instance, respectively.

65. Whereas Article 7 lists absolute grounds for refusal of registration without reference to third parties, Article 8 concerns opposition by proprietors of existing trade marks, on grounds relating to a conflict with the rights of those proprietors. The registration procedure is governed by Title IV (Articles 36 to 45) and is structured as follows: (i) examination of formal conditions of filing; (ii) examination of absolute grounds for refusal; (iii) search for possibly conflicting earlier trade marks; (iv) publication of the application; (v) observations by third parties concerning absolute grounds for refusal in Article 7; (vi) opposition by proprietors of existing trade marks on relative grounds in Article 8; (vii) possible withdrawal, restriction, amendment or division of the application; (viii) registration. Once a trade mark is registered, Articles 51 and 52 provide respectively for absolute and relative grounds of invalidity to be raised on application to OHIM or on the basis of a counterclaim in infringement proceedings.

66. Looking at those provisions, I find the reasoning in Durferrit entirely cogent in a situation in which a party seeks to oppose registration of a mark on a ground going to the essential registrability of the mark. On the one hand, such grounds are not among those exhaustively laid down in the provisions governing the opposition procedure and, on the other hand, other more appropriate procedures are available under different provisions, either in parallel with the opportunity to bring opposition proceedings or following registration.

67. However, I am not convinced that such reasoning is equally applicable where a party seeking to register a Community trade mark wishes, as a defence in opposition proceedings , to argue that the mark on which the opposition is based should not have been registered.

68. First, while the Regulation specifies exhaustively the grounds on which registration may be opposed, it lays down no explicit conditions as to the counter-arguments which may be used in defence to opposition. Since similarity and likelihood of confusion can only be assessed by comparing the allegedly conflicting marks, such arguments may clearly concern the earlier mark as well as the mark whose registration is sought.

69. Thus, in the present case, the argument has focused largely on the degree of distinctiveness of the earlier mark. That argument was, quite rightly, taken into consideration by the opposition division, the Board of Appeal and the Court of First Instance, because that degree of distinctiveness is an aspect of the assessment of likelihood of confusion. However, absence of distinctiveness is also an absolute ground for refusal under Article 7(1)(a) and (b), yet the Court of First Instance – again quite rightly, in my view – did not dismiss the argument as inadmissible on that ground.

70. Consistently with that approach, there is in my view no reason to refuse to examine an argument relating to the distinctiveness of the earlier mark – which is the basis on which L & D submitted its argument concerning the shape necessary to obtain a technical result – simply because it relates also to an absolute ground for refusal under Article 7. If it is permissible to argue that the earlier mark has only limited distinctiveness, an argument that it lacks distinctiveness to the extent of not being capable of registration should not be excluded from consideration. Where it is alleged that the earlier mark consists exclusively of a shape necessary to obtain a technical result, examination of that argument might lead to the conclusion that the mark does not consist exclusively of such a shape but none the less, because of its similarity to such a shape, lacks sufficient distinctiveness for likelihood of confusion to be established in the circumstances of the case.

71. Second, I agree that it is not possible in opposition proceedings to declare an earlier mark invalid – which was the basis of the decision in Durferrit – and that, if a party to such proceedings seeks such a declaration, the proper course of action is for that party to initiate invalidity proceedings and for the opposition division (or Board of Appeal, as the case may be) to consider whether it is appropriate to suspend the opposition procedure. However, that course of action seems cumbersome and procedurally inefficient if no such declaration is sought and if examination of the submission could lead to a finding such as the one I have outlined in the preceding paragraph. It is particularly cumbersome where earlier national marks are relied upon and even more problematic where, as in the present case, there is some confusion as to the identity of the earlier mark on whose distinctive character the finding of likelihood of confusion is based.

72. Third, the question of what arguments may be raised to counter an objection to registration goes to the rights of the defence. Whilst it may be unobjectionable to compel a party who initiates opposition proceedings to use other more appropriate procedures in order to raise absolute grounds for refusal, it seems less equitable to require the party against whom those proceedings have already been initiated to forgo an argument in defence and to initiate other proceedings in order to pursue that argument.

–Evidence concerning the use of the earlier mark

74. Finally with regard to the finding of acquired distinctive character, L & D argues that the Court of First Instance misapplied the case-law it cited (46) in concluding that material postdating the application for registration could be accepted as evidence of the pre-existing situation and that acquisition of such character could be found on the basis of general indications concerning volume of publicity or sales. Furthermore, it submits, evidence of volume of sales is less significant for everyday goods of small value such as those in issue. The Court of First Instance was wrong to take the date of registration of the ARBRE MAGIQUE mark as the beginning of use without proof of actual use from that date. Moreover, all the sales and publicity data concerned the use of the denomination ‘Arbre Magique’, not of the ARBRE MAGIQUE mark.

75. Of those arguments, the issue of the significance to be accorded to the volume of sales of the type of product concerned is one of factual assessment which, as such, falls outside the scope of an appeal. The arguments concerning the duration and extent of use specifically of the ARBRE MAGIQUE mark raise questions which I prefer to deal with below in the context of the statement of reasons. At this point, I shall confine myself to examining the arguments concerning the date and nature of the evidence accepted.

76. As regards the possibility of accepting evidence of use of the earlier mark after the filing of the application to register the Aire Limpio mark, I do not consider that the Court of First Instance committed any error in law. This Court stated in Alcon (47) that ‘the Court of First Instance could without inconsistency in its reasoning or error of law take account of material which, although subsequent to the date of filing the application, enabled the drawing of conclusions on the situation as it was on that date’. Whether that constitutes a general rule (as L & D asserts) or not, it does not preclude the Board of Appeal and the Court of First Instance from drawing the conclusions which they did on the basis that a large market share is not acquired overnight.

77. As regards the possibility of relying on general indications concerning volume of publicity or sales, the Court of First Instance stated at paragraph 85 of its judgment:

‘…it is not possible to accept the applicant’s argument that the Board of Appeal was wrong to find that the earlier mark had a particularly distinctive character in Italy by relying solely on general indications regarding the volume of advertising and sales figures. Admittedly, the distinctive character of a mark cannot be shown to exist solely by reference to general, abstract data, such as specific percentages (Case C-299/99 Philips [2002] ECR I-5475, paragraph 62). Nevertheless, … firstly, … that case-law concerns the acquisition of the distinctive character of a mark which is the subject of an application for registration and not, as in the present case, the assessment of whether a registered mark which has already acquired distinctive character is well known. Secondly, in order to establish, in the present case, whether the mark is well known, the Board of Appeal did not only take into account general indications, such as specific percentages, but also the prolonged use of the mark ARBRE MAGIQUE, which, furthermore, the applicant did not dispute.’

78. L & D argues, first, that there is no relevant distinction to be drawn, as regards acquisition of distinctive character, between the situation in Philips and that in the present case and, second, that the statement regarding prolonged use is itself of a general and unconfirmed nature.

79. Philips concerned an application to register a mark which was alleged to have acquired distinctive character and thus not to be excluded from registration as lacking such character. (48) The passage on which the Court of First Instance relied in the judgment under appeal is itself based on the judgment in Windsurfing Chiemsee . (49)

80. In both judgments the Court stated that in assessing the distinctive character of a mark in such circumstances, account may be taken of its market share, of how intensive, geographically widespread and long-standing its use has been, of the amounts invested in promoting it, of the proportion of the relevant class of persons who, because of it, identify goods as originating from a particular undertaking; and of statements from chambers of commerce and industry or other trade and professional associations. If, on that basis, it is found that at least a significant proportion of the relevant class of persons identifies goods as originating from a particular undertaking because of the trade mark, then the criterion of acquired distinctiveness is fulfilled. However, it cannot be shown to be fulfilled solely by reference to general, abstract data such as specific percentages. (50)

81. I do not see how it could be acceptable to refer solely to general, abstract data in order to establish, in a case such as the present, that a mark has acquired a particularly distinctive character by reason of the reputation it enjoys with the public but not, when seeking to register a mark, that it has become distinctive in consequence of the use which has been made of it. In both cases, the criterion is the same. A mark acquires distinctive character if, although not inherently likely to be perceived as distinguishing the products of a particular undertaking, it none the less comes to be so perceived. The way in which such perception may be established cannot differ according to whether it is to be used in order to demonstrate that a mark can be registered or in order to assess likelihood of confusion with another mark whose registration is sought. (51)

82. Moreover, the Court of First Instance’s approach implies that the dictum in Philips cannot be transposed to the assessment of ‘whether a registered mark which has already acquired distinctive character is well known’. If that is not merely circular, it assumes that a greater degree of distinctiveness must be shown in order to establish likelihood of confusion than is necessary for a mark to be registered. If general, abstract data cannot suffice in the latter case, it seems to me that, a fortiori, they cannot suffice in the former.

83. I therefore agree with L & D that the distinction drawn by the Court of First Instance is incorrect in law.

84. It remains to be considered whether the duration of use of the earlier mark, the market share it enjoyed and the amounts invested in advertising it constitute ‘general, abstract data’. The Court of First Instance appears to accept that the two latter criteria constitute ‘general indications, such as specific percentages’ falling within that concept (and that point is not disputed), but that the prolonged use of the earlier mark does not.

85. The distinction again does not appear to me to be valid. At point 30 of its decision, the Board of Appeal referred to annual sales of 45 million units, to a market share of more than 50% and to advertising expenditure of more than ITL 7 billion. At point 31, it referred to the fact that the earlier mark had been registered in Italy since 1954. If the former are general, abstract data, it seems to me that the latter must be also.

86. Looking at the prohibition of exclusive reliance on general, abstract data, such as specific percentages, in the light of the list of factors indicated in Philips and Windsurfing Chiemsee as capable of being taken into account, it seems to me that the Court’s meaning is that, in addition to figures whose interpretation may be affected by factors such as the extent of competition, (52) some evidence must be presented that the mark in issue is actually perceived as linking the products which bear it with a particular undertaking. If such evidence cannot come solely from data such as market share and advertising investment – and I agree it cannot – nor can it come from mere duration of use or registration.

87. On this argument, therefore, I conclude that the Court of First Instance erred in law in paragraph 85 of its judgment by accepting that the Board of Appeal was entitled to find that the earlier mark had acquired a particularly distinctive character on the sole basis of sales and advertising figures and the date of first registration in Italy.

Error in the finding that the marks were similar

–Word element in the Aire Limpio mark

89. That argument seeks recognition that the lack of meaning of the words ‘Aire Limpio’ for the Italian public renders the Aire Limpio mark fanciful and distinctive in Italy. It thus concerns an assessment of fact which falls outwith the scope of an appeal. The fact that the Court of First Instance has made a similar assessment in the circumstances of one case cannot oblige it to make such an assessment in every case. Contrary to L & D’s argument, there is no general rule of law that a word which lacks meaning is invariably fanciful and distinctive.

–Graphic element in the Aire Limpio mark

90. L & D argues that the Court of First Instance was wrong to consider that the graphic element of the Aire Limpio mark was clearly dominant in the overall impression and noticeably prevailed over the verbal element.

91. That argument is simply a repetition of the submission which I have dealt with at points 52 and 53 above, and must be dismissed for the same reasons.

–Conceptual similarity

92. In L & D’s view, since the outline of a fir tree was not a relevant element to be taken into consideration when assessing similarity, the marks could not be considered conceptually similar.

93. That argument, based as it is on the previous submission, cannot be accepted.

–Difference between the outlines

95. That is clearly an argument as to fact, inadmissible on appeal.

Error in the finding of likelihood of confusion

96. L & D submits that, in the light of its submissions on distinctiveness and similarity, the Court of First Instance erred in law in concluding that such a risk existed.

97. Since I am of the view that L & D’s submissions on distinctiveness and similarity are inadmissible and/or unfounded, I do not find it necessary to examine this argument.

Second ground of appeal – infringement of Article 73 and of the obligation to state adequate reasons

98. In its second ground of appeal, L & D submits that, since the Opposition division and the Board of Appeal had confined their assessment to a comparison of the Aire Limpio and silhouette marks, the Court of First Instance infringed Article 73 of the Regulation by taking account of evidence relating to other marks, in particular the ARBRE MAGIQUE mark. L & D was therefore not in a position to put its case adequately with regard to the allegations and evidence relating to those other marks.

99. OHIM considers that the ground of appeal is inadmissible, as seeking a review of findings of fact and that, in any event, L & D was not only able to, but did, defend its point of view adequately with regard to the use and reputation of the other marks. Moreover, the fact that the ARBRE MAGIQUE mark had been excluded from the comparison for reasons of economy did not mean that evidence relating to its use and reputation was irrelevant to the Italian public’s impression of the silhouette mark. Sämann adds that the judgment under appeal is clear and unequivocal in its reasoning.

100. The argument on this ground of appeal is brief (though L & D has submitted other arguments concerning the acceptance of evidence relating to the ARBRE MAGIQUE mark (54) ) and, in itself, does not appear to reveal any obvious breach of the obligation to state reasons. On the one hand, it is quite clear that the Board of Appeal did not confine its comparison to the silhouette mark but also examined the evidence presented to it relating to the use of Sämann’s other marks in Italy. On the other hand, that evidence and the argument concerning it were just as clearly accessible to L & D in the course of the proceedings before both the Board of Appeal and the Court of First Instance.

101. However, the issue of inadequacy of the reasons stated for a decision concerns infringement of an essential procedural requirement and, involving a matter of public policy, must be raised by the Community judicature of its own motion. (55) Since I feel more general doubts as to the reasoning of the Board of Appeal and the Court of First Instance, I propose therefore to examine the issue on a rather broader basis. (56)

102. In paragraphs 113 and 114 of its judgment, the Court of First Instance correctly stated that the scope of the duty to state reasons under Article 73 of the Regulation is the same as that set out in Article 253 EC: to show clearly and unequivocally the reasoning of the author of the decision in order, on the one hand, to allow interested parties to know the justification for it and thus to be in a position to protect their rights and, on the other hand, to enable the Community judicature to exercise its power to review the legality of the decision. (57)

103. The Board of Appeal based its finding of likelihood of confusion essentially on the particularly distinctive character which ‘the earlier mark’ had acquired in Italy through prolonged use and wide reputation. That conclusion therefore required a clear and unequivocal chain of reasoning linking the earlier mark with the evidence of use and reputation. However, the decision did not unequivocally define what was meant by ‘the earlier mark’.

104. First, the Board of Appeal stated that it would compare the Aire Limpio mark only with the silhouette mark, as ‘representative of the others’. (58) However, the force of that is somewhat undermined by the further statement, in the same sentence, that the choice was based on ‘the same reasons of economy as those given in the contested decision’ – since the opposition division had given as its reason that the other marks displayed greater differences, in comparison with the Aire Limpio mark, than did the silhouette mark. (59)

105. Then the Board of Appeal accepted, as evidence of use and reputation of the earlier mark, data concerning advertising and sales of Sämann’s car air fresheners, without reference to any specific mark under which they were advertised or sold. (60)

106. Finally, the fact that the CAR-FRESHNER mark had been protected in Italy since 1954 was cited as evidence of prolonged use of the mark in an essentially identical form, explaining its market share and reputation with the public. (61)

107. It seems implicit in that reasoning that the silhouette mark and all of Sämann’s other earlier marks protected in Italy were sufficiently similar for each to benefit from distinctiveness acquired by the others. However, apart from citing the date of registration of the CAR-FRESHNER mark, the Board of Appeal gave no details from which specific evidence could be linked to a specific mark or marks. Moreover, its assumption of such close similarity between Sämann’s various marks was supported by no specific justification of the kind that would seem called for in the light of the opposition division’s finding that the similarity between the Aire Limpio mark and the silhouette mark was (appreciably) greater than that between the Aire Limpio mark and Sämann’s other marks.

108. In contrast with my understanding of the Board of Appeal’s decision, the Court of First Instance stated that the Board had based its findings on the use and reputation of the ARBRE MAGIQUE mark and had considered the silhouette mark to be a part of that mark.

109. Neither of those statements appears to me to be confirmed by a reading of the Board of Appeal’s decision. It is true that OHIM is recorded as stating at the hearing that the evidence of established use in Italy concerned the ARBRE MAGIQUE mark and not the CAR-FRESHNER mark. (62) However, I do not consider that such a statement can legitimately complete, far less correct, the reasoning as it appears from a straightforward reading of the Board of Appeal’s decision.

110. It therefore seems to me that the Board of Appeal failed to explain fully and clearly the precise chain of reasoning which led it to find that the silhouette mark had a particularly distinctive character as a result of the sales volume, advertising budget and length of registration of one or more other marks, and that the Court of First Instance compensated for that failure by making certain assumptions about the chain of reasoning on grounds which are unclear.

111. That seems particularly regrettable since the approach taken – essentially, attributing the distinctive character of one mark also to another mark – is unusual and would not, at first sight, appear to have been necessary. On the assumption that the silhouette mark is indeed sufficiently similar to the mark or marks whose distinctive character was established for that character to be ascribed to it, the latter might have been compared directly with the Aire Limpio mark for the purpose of establishing likelihood of confusion.

112. In that light, the Board of Appeal’s reasoning could be viewed as inconsistent with the Court’s case-law to the effect that, wh ile the reasons on which a decision following a well-established line of decisions is based may be given in a summary manner, for example by a reference to those decisions, the Community authority must give an explicit account of its reasoning if the decision goes appreciably further than the previous decisions. (63)

113. Attempting to reconstitute an adequate chain of reasoning which reflects what seems to have been decided in substance, I reach the following interpretation.

114. The Board of Appeal decided, first, that Sämann’s marks protected in Italy, together with the silhouette mark, were all similar to the Aire Limpio mark in the same way and to the same degree so that, for the purpose of assessing the likelihood of confusion, the acquired (64) distinctiveness of one (or more) was shared by all.

115. Second, the evidence of sales volume and advertising expenditure in Italy in respect of one or more of Sämann’s marks, together with the length of registered protection of the CAR-FRESHNER mark, was sufficient to demonstrate that the marks collectively, and thus the silhouette mark individually, had acquired a particularly distinctive character, by reason of the reputation they enjoyed with the relevant public, and thus that, in view of the similarity between the Aire Limpio mark and the silhouette mark, there was a likelihood of confusion.

116. Without forming a view on the factual assessment, I think such reasoning would be defensible. However, in the Board of Appeal’s decision, it is not explicit in its entirety. I have pieced it together from various parts of the decision, some explicit, others implicit. Moreover, there are lacunae which cannot be supplied from the decision itself: (i) on what grounds was it concluded that all Sämann’s marks could be considered so similar to each other that distinctiveness acquired by one was shared by all?; (ii) to which mark or marks did the sales and advertising data relate?; (iii) on what grounds was it justified for the Board of Appeal to take the approach of ‘transferring’ acquired distinctiveness from the marks enjoying longstanding protection in Italy to the silhouette mark, for which registration as a Community trade mark was still pending at the material time, rather than comparing the Aire Limpio mark directly with the former marks?

117. Those factors constitute, in my view, serious shortcomings in the Board of Appeal’s decision. As regards (i) and (ii), it is not possible for the Community judicature to review the legality of the decision without being able to verify that the Board of Appeal identified the mark or marks to which the data related and correctly assessed its or their similarity with the silhouette mark for the purpose of ‘transferring’ the acquired distinctiveness. As regards (iii), it is not possible for the Community judicature to verify that the Board of Appeal did not take that approach because it considered that the similarity between the Aire Limpio mark and the marks enjoying longstanding protection in Italy was insufficient to reach the same conclusion on a direct comparison.

118. It therefore seems to me that the Board of Appeal’s decision does not contain a sufficient statement of reasons to meet the standard required by Article 73 of the Regulation, namely to allow the Community judicature to exercise its power of review.

119. In that light, I find that the Court of First Instance’s assessment, at paragraph 117 of its judgment, that ‘the contested decision shows in a clear and unequivocal manner the reasoning of the Board of Appeal’, cannot be legitimately drawn from the decision. Moreover, in my view, the Court of First Instance did not sufficiently explain its reasons for asserting that the evidence on which the Board of Appeal relied related solely to the ARBRE MAGIQUE mark, or that the Board had considered the silhouette mark to be part of the ARBRE MAGIQUE mark – the latter assertion appearing as possibly a retrospective justification in the light of the Nestlé judgment, which had been delivered since the Board of Appeal’s decision.

120. I am thus of the view that both the Board of Appeal and the Court of First Instance failed to state adequate reasons for their decisions.

Conclusions to be drawn

121. I have reached the view that the judgment under appeal is legally flawed in four respects. First, the Court of First Instance erred at paragraph 85 by accepting that the Board of Appeal was entitled to find that the earlier mark had acquired a particularly distinctive character on the sole basis of sales and advertising figures and the date of first registration in Italy. Second, it erred again at paragraph 105 in dismissing the argument that the shape of the earlier mark was necessary to obtain a technical result, without examining the substance of that argument. Third, at paragraph 117, it erred in its assessment of the Board of Appeal’s reasoning. Fourth, it erred, passim, in assuming that the Board of Appeal had based its assessment on evidence relating to the ARBRE MAGIQUE mark when that was not indicated in the decision.

122. In that light, and in view of the fact that no outstanding issues of law raised before the Court of First Instance remain to be dealt with, it seems to me that both the judgment under appeal and the Board of Appeal’s decision should be annulled and the case remitted to OHIM.

Costs

123. Under Article 69(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. L & D has applied for costs. Its appeal should in my view be successful. OHIM should therefore bear the costs.

Conclusion

124. In the light of all the foregoing considerations, I am of the opinion that the Court should:

–annul the judgment in Case T-168/04;

–annul the decision of the Board of Appeal in Case R 326/2003-2;

–remit the case to OHIM for a decision on the facts;

–order OHIM to pay the costs of the proceedings at first instance and on appeal.

(1) .

(2) – Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1; ‘the Regulation’).

(3) – See, for example, Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraphs 34 and 35 and the case-law cited there.

(4) – See in particular Case C-251/95 SABEL [1997] ECR I-6191, paragraph 24; Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 38. Those cases concerned national trade marks, and thus fell not under the Regulation but under First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). However, the provisions of the two measures concerning grounds for refusal of registration are essentially identical, and have been interpreted as such by the Court.

(5) – That is to say, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’).

(6) – Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

(7) – International trade mark No 612525, registered on 9 December 1993, with effect in, inter alia, Italy, for goods in class 5. It appears identical to the silhouette mark, but has not been referred to specifically in the decisions in issue in the present case.

(8) – That is to say, trade marks protected in several countries under the Madrid system for the international registration of marks, administered by the World Intellectual Property Organisation.

(9) – That summary of the Opposition Division’s analysis is based on the version reproduced in point 6 of the Board of Appeal’s decision.

(10) – Decision of 15 March 2004 in Case R 326/2003-2 Julius Sämann v L & D .

(11) – Points 22 and 23 of the Board of Appeal’s decision.

(12) – Points 24 to 26.

(13) – Points 27 and 29, citing Case C-375/97 General Motors [1999] ECR I-5421, paragraph 27.

(14) – Points 30 to 32.

(15) – Point 33.

(16) – Other aspects of the decisions of the Opposition Division and the Board of Appeal are not in issue in this appeal.

(17) – Case T-168/04 L & D v OHIM – Sämann (Aire Limpio) [2006] ECR II-2699.

(18) – See points 4 and 6 above.

(19) – Paragraphs 67 to 71 of the judgment under appeal.

(20) – Case C-353/03 Nestlé [2005] ECR I-6135, paragraphs 30 and 32.

(21) – Paragraphs 72 to 77.

(22) – Case C-192/03 P Alcon v OHIM [2004] ECR I-8993, paragraph 41 and the case-law cited; Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 31.

(23) – Paragraphs 78 to 84 of the judgment under appeal.

(24) – Case C-299/99 Philips [2002] ECR I-5475, paragraph 62.

(25) – Paragraph 85 of the judgment under appeal.

(26) – Paragraphs 86 to 88.

(27) – Paragraphs 89 and 90.

(28) – Paragraph 91.

(29) – Paragraphs 92 to 94.

(30) – Paragraphs 95 and 96.

(31) – Paragraphs 97 to 99 of the judgment under appeal, citing Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32; Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47; and SABEL , cited in footnote 4 above, paragraph 24.

(32) – Paragraphs 100 to 102 of the judgment under appeal.

(33) – Paragraphs 103 to 105.

(34) – Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 64 and 65.

(35) – Paragraphs 113 to 117 of the judgment under appeal.

(36) – Statute of the Court of Justice, Article 58.

(37) – See point 7 above.

(38) – Paragraph 76 of the judgment uses the words ‘significant or even predominant ’ (‘significatif voire prédominant’ in French, ‘significativo e incluso predominante’ in Spanish).

(39) – Cited in footnote 20 above.

(40) – SABEL , cited in footnote 4, paragraph 25; Case T-117/02 Grupo El Prado Cervera v OHIM – Debuschewitz heirs (CHUFAFIT) [2004] ECR II-2073, paragraph 51; Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II-2831, paragraphs 55 and 56.

(41) – Case C-104/01 Libertel [2003] ECR I-3793, paragraph 65; Case T-36/01 Glaverbel v OHIM (glass-sheet surface) [2002] ECR II-3887, paragraph 23.

(42) – Case T-224/01 Durferrit v OHIM – Kolene (NU-TRIDE) [2003] ECR II-1589, paragraphs 72 to 75.

(43) – Pursuant to what is now Rule 20(7) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended.

(44) – Case T-186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II-1887, paragraph 71.

(45) – Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 55. The same point was discussed on appeal to the Court of Justice, but did not form part of the Court’s reasoning in its order (Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraphs 38 to 42). The case concerned an application to register as a Community trade mark a sign comprising an element which was descriptive in German and a distinctive element; the earlier national mark, which consisted solely of the German descriptive element, was registered in Spain, where it was not descriptive.

(46) – Alcon , La Mer Technology and Philips , cited above in footnotes 22 and 24.

(47) – Cited above in footnote 22, paragraph 41.

(48) – The application was for registration as a national mark, and thus fell under the essentially identical provisions of Directive 89/104 (see footnote 4 above). Articles 3(1) of the Directive and 7(1) of the Regulation preclude registration of trade marks which, inter alia, (b) are devoid of distinctive character, (c) consist exclusively of indications which may serve in trade to designate characteristics of the products concerned (including their geographical origin) or (d) consist exclusively of signs or indications which have become customary in the trade; Article 3(3) of the Directive provides: ‘A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character…’ and Article 7(3) of the Regulation reads: ‘Paragraph 1(b), (c) or (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’

(49) – Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779. That judgment concerned the registrability at national level of a mark indicating geographical origin but alleged to have acquired distinctive character.

(50) – Windsurfing Chiemsee , paragraphs 51 and 52; Philips , paragraphs 60 to 62.

(51) – See also, by way of analogy, the Opinion in Case C-371/02 Björnekulla Fruktindustrier [2004] ECR I-5791, at point 71 et seq. (especially points 73 and 75), where Advocate General Léger considers that the same criteria should be applied both when determining whether a mark has acquired sufficient distinctive character for registration and when determining whether a registered mark has not lost that degree of distinctiveness.

(52) – For example, a very high market share might be due to very limited competition, in which case the mark might be perceived by the relevant public as a generic indication rather than as identifying the origin of the products.

(53) – Case T-286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II-4953; see in particular paragraph 41 et seq.

(54) – See points 74 and 75 above.

(55) – Case C-166/95 P Commission v Daffix [1997] ECR I-983, paragraph 24; Case C-367/95 P Commission v Sytraval [1998] ECR I-1719, paragraph 67; Case C-265/97 P VBA v VGB [2000] ECR I-2061, paragraph 114.

(56) – It may be noted that the Court of First Instance’s own obligation to provide adequate reasoning in its judgment derives not from Article 73 of the Regulation but from Article 36 of the Statute of the Court of Justice.

(57) – See, for example, KWS Saat v OHIM , cited in footnote 34 above, paragraphs 64 and 65.

(58) – Point 23 of the Board of Appeal’s decision.

(59) – See point 6 of the Board of Appeal’s decision.

(60) – Point 30.

(61) – Point 31. It may be added that, in contrast to the figures for market share and advertising in Italy, the original reference to yearly sales of 45 million items did not indicate the geographical market concerned.

(62) – See paragraph 86 of the judgment under appeal.

(63) – See, for example, Case C-350/88 Delacre v Commission [1990] ECR I-395, paragraph 15.

(64) – I note that, although it expressed doubt, the Board of Appeal did not reject or refute the opposition division’s finding that the silhouette mark was not intrinsically distinctive.