A figurative mark can acquire a distinctive character through use as part of another mark, the ECJ has ruled.

The ECJ's decision concerned an unsuccessful application to register (as a Community trade mark) a cartoon character in the shape of a fir tree, which also contained some word elements. The ECJ ruled that it was likely to be confused with an existing Community trademark consisting of a fir tree silhouette. However, any confusion would be due to the distinctiveness of the silhouette, which arose as a result of its prior use in more complex marks with a word element that were well known in Italy.

Where a mark contained both word and figurative elements, it should not automatically be assumed that the words were the dominant element: similarity (and the possibility of confusion) would also arise where the figurative element was particularly distinctive.

Law: case C-488/06 P, L & D v OHIM

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The original publication date for this article was 12/01/2009.