Environmental Manufacturing LLP v OHIM, European Court of Justice
Evidence of a change in economic behaviour of average consumers was necessary to establish “detriment” to a trade mark with a reputation, if the owner of the earlier trade mark wanted to stop the registration of the later mark on the grounds of Article 8(5) of the Community Trade Mark Regulation. Article 8(5) says that a trade mark should not be registered if there is a similar or identical earlier ark with a reputation where use without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark. The EU’s General Court should not have ruled otherwise and that it was sufficient to show that a trade mark’s ability to identify the source of goods or services had been weakened. This is according to a ruling of the European Court of Justice.
In reaching its conclusion, the ECJ said that the Intel Corp v CPM judgment was clear – an actual change or a serious likelihood of a future change to the distinctive character of the earlier trade mark had to be shown. If insufficient evidence was adduced of that condition, detriment or risk of detriment to the distinctive character of the earlier mark could not be shown. Showing a change in economic behaviour was an objective condition – merely recognising changes to consumers’ perceptions was not sufficient, if consumers are not confused.