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.
