Counteraction principle

In Ruiz-Picasso and Others v OHIM [2006] ECR I-643,[1] the estate of Pablo Picasso argued that Daimler Chrysler infringed upon the Picasso trademark when it licensed PSA Peugeot Citroën to use the trademark Picaro on one its models. The estate argued that the trademark name Picaro was too similar to Picasso and would cause public confusion. After being defeated in lower European courts, the appeal was dismissed in the European Court of Justice.[2]

In Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S,[3] the applicants claimed that Community Trade Mark protection for Mobilix would risk confusing consumers on the basis that the trademarks were phonetically similar. OHIM accepted the registration of the mark on the basis that everyone knew the fictional character Obelix. The OHIM Board of Appeal allowed for opposition by the Paris-based publisher of the Obelix character for classes 9 and 35 of the Madrid System. However, for all other classes the appeal was dismissed, as the General Court (European Union) concluded that there should be no confusion over such a popular character.[4]