In Case T-570/10, Entec Industies Ltd filed a CTM application for a figurative CTM representing a wolf’s head for goods in Class7: ‘Machines for professional and industrial processing of wood and green waste; professional and industrial wood chippers and shredders’

The opponent Société Emar Wolf filed an opposition on the grounds of Article 8 (5) CTMR on the basis of the following earlier French and international marks with effect in Portugal and Spain, registered among others for goods in Class 7 :

The BoA annulled the decision of the Opposition Division on the ground that the earlier marks were highly reputed in three Member States. It then held that there was some similarity between the marks at issue and that the relevant public could establish a link between the signs, having regard to the distinctiveness and reputation of the earlier marks, and to the similarity of the goods covered by the marks at issue. Finally, the Board of Appeal concluded, referring to the arguments put forward by the intervener, that the mark applied for could dilute the unique image of the earlier marks and could take unfair advantage from their distinctive character or their reputation. With regard to Article 42(2) and (3) of the CTMR, the BoA held that the earlier marks had been put to genuine and continuous use for the protected goods.

Regarding the link between the marks at issue, the Court found that the BoA had rightly taken into account that the differences (i.e.: the canines represented by the two marks are different, one drawn in detail which has an aggressive quality whereas the second, apparently more amiable, is less detailed) were not of such importance and the relevant public, which displays an average level of attention and has imperfect recollection, will connect the image of the mark applied with that of the earlier marks.

Further, according to well-established case-law Intel Corporation (case C-252/07) the earlier mark is proprietor is required to adduce evidence that use of the later mark would be detrimental to the distinctive character of the earlier mark, however it is not required to show and additional effect on the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered.

The Opponent had indeed substantiated its arguments such as to show a risk, which is not hypothetical, that use of the mark applied for could be detrimental to the earlier marks that use of the mark applied for would lead to an erosion of the earlier marks’ reputation, since the relevant public would no longer associate the intervener’s goods with those marks, and that the figurative part of those marks would be rendered commonplace and would lose its highly distinctive character.

In the present case, therefore the use by the applicant of a canine’s head as a mark for garden and horticultural tools, identical or similar to those sold by the opponent under marks also representing a canine’s head, necessarily means that the consumers of those tools will no longer immediately associate the image of a canine with the opponent’s goods and would undermine the commercial efforts made by the latter for the development of its marks.