Similarity between goods and services

On January 25, 2007, the Court of Justice of the European Communities upheld that, for a trademark registered for cars “ in respect of which is it well known “ and for toys, the affixing by a non-authorized party of an identical sign on scale models constitutes a use which the trademark owner is entitled to prevent only if that use affects or is liable to affect the function of the trademark for toys.

For the Court, the owner of a trademark covering car only can prevent its use for toys if such use takes unfair advantage of or is detrimental to the distinctiveness or to the reputation of said trademark. In other words, cars and toys are not similar.

Car trademarks should consequently from now on cover toys and toys trademarks should now claim cars to legitimately base actions. The CJEC added that the non authorized affixing of a car trademark reproduced on scale models can not be regarded as indicating a characteristic of those scale models in order to faithfully reproduce the vehicles.


On February 15, 2007, the Court of Justice of the European Communities upheld that HAIRTRANSFER could not mature into registration for training services in class 41. The Court considered that, without further itemization, the training services in concerns , which purpose is to transfer some practice or knowledge, could be offered in the haircut field.

The French High Court has approved on December 19, 2006, the Court of Appeal decision according to which the former SOBIESKI and JAN SOBIESKI trademarks registered for vodka were final arguments to invalidate the registrations of JAN III SOBIESKI for tobacco products.

The decision is not resulting of counterfeiting or unavailability but of the prohibition of the use of a tobacco trademark even for non confusingly similar goods.

This decision is confirming that applying for tobacco goods when preexists an identical or similar trademark for non similar products leads to invalidation since the use of the junior trademark involves that the use of the earlier mark in its own field would constitute a prohibited indirect publicity. It is the attempt of the former trademark right to be normally used and advertised that has been sanctioned. It has to be noted that the first registrant has not to wait for the use of the tobacco trademark to file the invalidation action. Here is the confirmation of another French paradox: to avoid the restriction of the publicity and use of his trademark the registrant of the earlier trademark is obliged to obtain the invalidation of the junior tobacco trademark.

This case’s paradox consists in the fact that the earlier trademark identifies an alcoholic beverage. Its right was limited with the same kind of provisions as a tobacco trademark concerning advertising purposes. The purpose of the invalidation for the earlier was only to keep safe the very narrow field of communication he has been given by the same act. In this matter it would have been interesting to raise:

— the coexistence of confusingly similar trademarks identifying goods not similar but the publicity of which is regulated for health purpose by identical texts, or

— the possibility for the junior registrant to object to the turpitude of the goods of the senior as a bar to his action. The senior registrant has preferred to found his claim on the existing precedents, at least did he permit to confirm them at the top court level in France 

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