A fortnight ago, Advocate General Eleanor Sharpston QC delivered an Opinion in Case C‑488/06 P L & D SA v OHIM, Julius Sämann Ltd, otherwise known as the "Aire Limpio" case. In brief, L & D applied to register the Aire Limpio figurative mark (right) for air fresheners in classes 3 and 5. Sämann opposed, citing its earlier silhouette tree mark and two almost identical slhouette marks, one of which bore the words 'CAR-FRESHNER' while the other read 'ARBRE MAGIQUE'. Sämann alleged a likelihood of confusion on account of the similarity of the respective marks and the identity or close similarity of the products for which they were registered or applied for.

The Opposition Division rejected the opposition: despite the identity/similarity of the goods, the form of a pine or fir tree 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 also 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.

The Second Board of Appeal disagreed. 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. 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’.

The Board also deduced that the conceptual similarity between the marks – the idea represented by the shared shape of a fir tree – could, at least in Italy, create a likelihood of confusion on the part of the public concerned. The differences between them, essentially the fact that the fir tree in the Aire Limpio mark contained a comically-drawn character and a word element, would not prevent that likelihood of confusion because it could be perceived by the public concerned as an amusing and animated variant of the earlier mark, particularly when the similarity between the products covered is taken into account. 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. L & D's appeal to the Court of First Instance failed, hence the appeal to the European Court of Justice.

Following a long analysis that encompassed both substantive and procedural issues, the Advocate General said:

"121. I have reached the view that the judgment under appeal is legally flawed in four respects. First, the Court of First Instance erred ... 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 ... 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, ... 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".