THE CONCEPT OF CONFUSION AND
DEVELOPMENTS IN
TRADE MARK OPPOSITION
DECISIONS OF THE CFI AND ECJ
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
INTRODUCTION
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Statistics
Likelihood of confusion (‘L of C’) – derivation
Assessment of L of C
CFI’s approach to assessment
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
NUMBER OF CTM APPLICATIONS FILED TO 30 SEPTEMBER 2006
©2006 OHIM
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
OPPOSITIONS RECEIVED TO 30 SEPTEMBER 2006
©2006 OHIM
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
STATISTICS
©2006 OHIM
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
LIKELIHOOD OF CONFUSION
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Derivation
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Article 4(1)(b) Harmonization Directive 89/104/EEC
(1) A trade mark shall not be registered or, if registered, shall be liable to be
declared invalid
[……….]
(b) If because of its identity with, or similarity to, the earlier trade mark and
the identity or similarity of the goods or services covered by the trade
marks, there exists a likelihood of confusion on the part of the public,
which includes the likelihood of association with the earlier trade mark.
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
10th Recital Harmonization Directive 89/104/EEC
“…whereas it is indispensable to give an interpretation of the concept of
similarity in relation to the likelihood of confusion; whereas the likelihood of
confusion, the appreciation of which depends on numerous elements and, in
particular, on the recognition of the trade mark on the market, of the
association which can be made with the used or registered sign, of the degree
of similarity between the trade mark and the sign and the goods or services
identified…..”
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
In assessing similarity, heavy reliance is placed on the following three
decisions of the ECJ:•
Sabel BV v Puma AG, Rudolf Dassler Sport (Case C-251/95) (“Sabel”) 11
November 1997
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Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97)
(“Canon”) 29 September 1998
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Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Hendel BV (Case C-342/97)
(“Lloyd”) 22 June 1999
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
The Elements
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Global assessment of all the factors
Distinctiveness of the earlier mark (inherent distinctiveness/ distinctiveness
through use)
Degree of similarity between the signs and the goods and services
Impact of the kind of goods and services on the assessment
The degree of sophistication and attention of the relevant public
Coexistence of the conflicting marks on the market in the same territory
Incidences of actual confusion
Prior decisions by Community or national authorities involving conflicts
between the same (or similar) marks
No confusion between the signs themselves but confusion about the origin
(indirect confusion)
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Similarity of Signs
“Signs are similar if under the assumption that the goods are identical and the
earlier sign has a normal or high degree of distinctiveness, there would be a
likelihood of confusion in the sense that the relevant public might believe that
the goods carrying the younger mark and the goods carrying the earlier mark
come from the same or economically-linked undertakings.”
Draft OHIM Opposition Guidelines Part 2, Chapter 2C – Status: July 2006.
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Similarity of Signs (Continued)
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Is necessary for a finding of a L of C
Must be evaluated in view of the L of C, i.e. whether the conflicting marks are
capable of suggesting that the goods or services have their origin in the same
or economically linked undertakings
The signs should be compared in the form that they enjoy protection
Must be carried out in relation to the respective territory where the earlier
mark is protected because of differences in meaning and pronunciation
The global appreciation of the visual, aural or conceptual similarity of the
marks in question must be based on the overall impression given by the marks,
bearing in mind, in particular, their distinctive and dominant components
The average consumer normally perceives a mark as a whole and does not
proceed to analyse it various details
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Two basic principles
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The assessment of similarity of signs must not only be based on some isolated
elements, but on the global appreciation of both signs under comparison;
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The distinctive and dominant components are, in particular, important for the
evaluation of similarity between the signs
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
The Notions of ‘distinctive’ and ‘dominant’
“Signs, unless they are unitary, (single word, single feature, single colour) are
perceived in normal life by focussing on the dominant element, that which
distinguishes the sign. At a next level of analysis, beyond the mere visual
perception, judgment is involved, and it is here that distinctiveness obtains its
additional value as a tool; signs or elements of signs which have no
distinctiveness in the legal sense, i.e. are descriptive, generic, or for other
reasons non-distinctive for the goods or services involved, will largely be
totally disregarded when determining similarity in the legal sense, however
much they may, as a matter of mere perception, dominate the sign. The
perception of what is dominant or distinctive will also vary depending on
whether the analysis centres on visual, aural or conceptual similarities.”
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Medion AG v Thomson Multimedia Sales Germany &
Austria GmbH (Case C-120/04) ECJ
THOMSON
LIFE
Ruling within context of infringement proceedings (Art5(1)(b)
Directive)
The mere dominance or lack of it, of a shared component is not
the key to whether a likelihood of confusion exists, where a
later composite mark includes an earlier mark for identical
goods. There may still be a L of C where the shared element is
not dominant in the later mark, but nonetheless has an
“independent distinctive role” in it
Marks must, it affirmed, be considered as a whole
The dismissal of “dominance” as the key issue.
LIFE
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Similarity of Goods and Services
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Is a necessary condition of L of C
Must be assessed without taking into account the degree of similarity of the
conflicting signs or the distinctiveness of the earlier mark(s).
[Canon] the L of C presupposes that the signs as well as the goods and
services covered are identical or similar, and the reputation of a mark is a
factor which must be taken into account when determining whether the
similarity between the signs or between the goods and services is sufficient to
give rise to a L of C
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Similarity of Goods and Services (Continued)
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An absolute borderline must be drawn
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The goods and services are similar if, supposing identical marks, the public
could believe that they come from the same or economically linked
undertakings
All the relevant factors relating to those goods themselves should be taken into
account
[Canon factors]: Nature, purpose, method of use, complementary
goods/services, competitive/interchangeable goods/services
[Further factors]: Channels of distribution, the relevant public, the usual origin
of the goods/services
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DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Inex SA v OHIM; Robert Wiseman &
Sons Ltd (Case T-153/03) (CFI) 13 June
2006
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Significant visual differences.
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Cowhide constituted an essential element
albeit with weak distinctive character. Use by
one party in Benelux was not capable of
conferring a particularly distinctive character
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Marks conceptually similar. Did not outweigh
significant visual differences and the weak
distinctive nature of the design when
considering the overall L of C.
Milk and dairy products
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Saiwa SpA v OHIM; Barilla Alimentare SpA (Case T344/03) (CFI) 5 April 2006
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Earlier marks (IT) covering identical goods (pasta)
‘Oro’ has weak distinctiveness in Italy describing goods of superior
quality.
No evidence of significant use by Opponent.
CFI held that the dominant element of the Opponent’s mark was
SAIWA.
Aural and visual differences between the marks. Presence of the
word ‘Oro’ was insufficient for a finding of similarity.
Conceptually, the meaning of the word ‘oro’ was secondary and
insufficient to offset the aural and visual differences. The distinctive
element of the Applicant’s mark was BARILLA.
No L of C
ORO
ORO SAIWA
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Mühlens GmbH & Co. KG v OHIM; Zirh International
Corp (Case T-355/02) (CFI) and (Case C-206/04) (ECJ) 23
March 2006
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Soaps, perfume, cosmetics, hairdressing and beauty services
Marks phonetically similar. Visually and conceptually
dissimilar.
Conceivable that phonetic similarity alone could create a
likelihood of confusion (Lloyd Schuhfabrik Meyer)
Existence of such a likelihood must be established as part of a
global assessment and it was but one of the factors to be
considered.
Conceptual differences could counteract aural similarities
provided that one of the signs has a clear meaning to the
relevant public (Ruiz-Picasso)
AG’s opinion 10/11/05 – unfortunate that a national court had
given a decision in conflict with the CFI
ZIRH
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Royal County of Berkshire Polo Club Ltd v
OHIM; The Polo/Lauren Co. LP (Case T-214/04)
(CFI) 21 February 2006
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L of C in respect of all goods applied for (BOA had allowed
application for ‘bleaching preparations and other substances
for laundry use, and polishing, scouring and abrasive
preparations).
Figurative element of the mark was dominant. Gave the
mark its distinctiveness and would be easily remembered by
consumers. The sport of polo had no connection with the
goods in Class 3 and was therefore highly distinctive. Soaps
had a dual function as housekeeping products as well as for
beauty and personal hygiene. Followed that there was
similarity between soap and bleaching preparations etc.
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Société des Produits Nestlé v OHIM; Quick Restaurants SA
(Case T-74/04) (CFI) 22 February 2006
QUICKIES
•Earlier FR & BX mark for QUICKIES covering Cls 29, 30 & 43.
•Later Mark for Cls 29, 30 & 32.
•Visual, phonetic and conceptual similarity.
•French or Benelux consumer would not perceive the picture as the
dominant element. Easier to say the word. Size of word corresponded
to size of picture. Food industry relied upon display of happy and
animated animals to capture a young audience. Rabbit might be
perceived as decorative only.
•Letter “s” very rarely pronounced in French when placed at end of
word
•A consumer with a little knowledge of English would make a
connection. Both evoked the idea of rapidity.
QUICKY
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Fernando Rodrigues Carvalhais v OHIM;
Profilpas Snc (Case T-206/04) (CFI) 1
February 2006
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Identical goods – Metal profiles, synthetic profiles,
building materials (Cls 6, 17 and 19)
The CFI held that it was possible to conclude that
there was a risk of confusion merely on the basis of
phonetic similarity (Lloyd Schuhfabrik)
Irrelevant that the BOA had previously allowed reg’n
of CTM’s in respect of identical goods for marks
containing the suffix –FIX, some of which pre-dated
this application.
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Castellblanch SA v OHIM; Champagne Louis
Roederer SA (Case T-29/04) (CFI) 8 December 2005
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Earlier mark protected in FR, DE, GB, IE and AT, BX, IT and
PT under International Reg’n in respect of ‘wines originating
from France, namely champagne, sparkling wines and
alcoholic beverages’
Applicant argued co-existence – CFI dismissed as it was not
shown that this resulted from an absence of a likelihood of
confusion and a number of disputes between the parties
indicated it was not peaceful
Reputation: The opponent’s 1999 survey showed reputation
only in relation to professional consumers and not the average
consumer
High degree of similarity between the signs and goods, there
was a likelihood of confusion
CRISTAL
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
RB Square Holdings Spain SL v OHIM;
Unelko NV (Case T-384/04) (CFI) 15 December
2005
Cleaning compositions
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Earlier ES mark.
No risk that the average Spanish consumer would
believe the marks derived from the same enterprise.
The marks were visually dissimilar (Clean X and
CLEN). Phonetically the words differed when
pronounced in Spanish
CFI concluded that the marks did not share a common
dominant element and there was therefore no risk of
confusion.
Bleaching preparations
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Sadas SA v OHIM; LT J Diffusion SA
(Case T-346/04)
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CFI held that the word ARTHUR was the dominant
element of the earlier mark. The addition of the
words ET and FELICIE did not counter the
similarity created by use of the word ARTHUR.
NB: Applicant did not dispute the reputation of the
earlier mark. Common in clothing sector for a mark
to be configured in various ways.
Public might believe that ARTHUR ET FELICIE
formed part of a new range of products marketed by
the owner of the ARTHUR mark.
ARTHUR ET
FELICIE
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
GFK AG v OHIM;BUS –Betreungs und
Unternehmensberatungs GmbH (Case T135/04) (CFI) 24/11/05
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ONLINE BUS (Cl.35 - drawing up statistics in the
fields of economics, marketing) BUS & Device
(Cl.35 Business consultancy).
Use of different mark from form registered.
The word BUS constituted the dominant verbal
element in each of the two signs.
This was the memorable element of each mark.
Visual difference not likely to preclude a L of C.
ONLINE BUS
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Ruiz-Picasso & Others vs. OHIM;
DaimlerChrysler AG [2006] Case C-361/04 P
(ECJ) (“Picasso”)
CFI looked at three factors in assessing the L of C
(i)
(ii)
(iii)
The similarity of the marks
The distinctive character of the earlier mark; and
The average consumer’s level of attention
The ECJ upheld all of the CFI’s findings.
Ceci n’est pas une
Picaro
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Picasso/Picaro (continued)
The ECJ:
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Reiterated the need for a global appreciation of the trade marks in question
when assessing whether there is a L of C between them
Endorsed the CFI’s finding that “where the meaning of at least one of the two
signs at issue is clear and specific so that it can be grasped immediately by the
relevant public, the conceptual differences observed between those signs may
counteract visual and phonetic similarities between them”. (para 20)
Were unable [as a matter of law] to review the CFI’s factual assessment which
resulted in them holding that the PICASSO sign was “devoid of any highly
distinctive character per se with respect to motor vehicles”. (para 32)
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
It is worth noting [and which was not drawn out in this case]:The beginning of a word sign bears a particular importance in the
assessment of the visual as well as the aural comparison. The OHIM and
the CFI regularly state that the consumer normally attaches more
importance to the first part of words.
El Corte Inglès Case T-183/02 (CFI of 17/03/2004) at para 81 “the
attention of the average and normally attentive consumer would firstly and
essentially be caught by the initial element”
L’Oréal Case T-112/03 (CFI of 16/03/2005) at para 70 “as concerns
phonetic comparison …. The beginning of a sign plays an essential part in
that regard”.
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
Les Editions Albert René v OHIM (Case T-336/03)
(CFI) 27/10/05
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Applied the CFI’s earlier decision in Picasso
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Marks: OBELIX vs MOBILIX
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Products: ‘Data processing apparatus and telephony’
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The CFI underlined that conceptual differences can in
certain circumstances counteract the visual and aural
similarities between the signs concerned
MOBILIX
OBELIX
DEVELOPMENTS IN TRADE MARK OPPOSITIONS
CONCLUSIONS
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A likelihood of confusion is dependent on numerous elements (10 th Recital)
Sabel, Canon and Lloyd
One size does not fit all – there is no formula - Picasso (formulaic?)
CFI’s adoption of a dominant component approach paired back by Medion v Thomson
Move away from dominance and back to global assessment
A new chapter: “independent distinctive role”?