Even though all Community trade mark Courts should be consistent in assessing the existence of a likelihood of confusion and are required to follow the criteria set in the preliminary rulings of the European Court, this is in reality not the case. They are sometimes influenced by their national jurisprudence or give different interpretations to the sometimes uncertain legal concepts set by the European Court of Justice, and thereby arriving at different decisions. Therefore, even though the Community trade mark Courts’
decisions cite the rules laid down by the European Court of Justice, there is still a possibility for different decisions and different results when faced with the question of assessing the existence of a likelihood of confusion.
The focus of this thesis is on the case law of the German, Spanish and UK Community trade mark Courts regarding the standards for the determination of a likelihood of confusion in infringement proceedings. In the table below, we can see in what proportion of the analyzed cases the Community trade mark Courts of these three Member States considered the distinct factors when assessing the existence of a likelihood of confusion.
Factors Spain UK Germany
1
Distinctive character of the senior mark 63.6% 85.7% 90%2
Similarity of the marks 100% 100% 100%3
Similarity of the goods/services 100% 100% 100%4
Association 100% 100% 70%5
Relevant average consumer 90.9% 71.4% 20%6
Actual incidences of confusion 9.1% 71.4% 0%7
Good faith 9.1% 0% 0%8
Prior Community or national decisions 0% 0% 0%[Table by author]
From those cases analyzed in the present thesis, the Spanish Community trade mark Courts always considers the similarity of the marks and goods or services. When assessing the degree of similarity between the marks, the Courts assess the phonetic and conceptual similarity, and also take account the dominant elements of the marks. When the dominant elements are identical, there is similarity of marks. Moreover, in the case of complex (mixed) marks, the Courts consider that the phonetic and denominative similarities are decisive, not the visual similarity, the reason being that things are asked by their names.
The Spanish Community trade mark Courts also considered in all cases analyzed the association that the public might make between the two marks. Moreover, emphasis was put on the degree of attention of the relevant average consumer and the distinctiveness of the senior mark. However, the Spanish Community trade mark Courts considered in only one of the cases analyzed whether there were actual incidences of actual confusion and whether the defendant acted in bad faith or not.
With respect to the United Kingdom Community trade mark Court decisions that were analyzed, the similarity of the marks and goods or services, as well as the
association that the public might make between the two marks, were always considered.
The distinctive character of the CTM, the degree of attention of the relevant average consumer, and actual incidences of confusion were considered in most, though not all, cases.
A decision worth mentioning is the Treat case.251 The Treat case was the first case of an English court in which the criteria regarding similarity of goods and services under the Trade Marks Act 1994252 had to be considered. Here, Mr. Justice Jacob first dealt with similarity between the goods, denying risk of confusion owing to a lack of similarity between the goods and services at issue, without, however, taking into account the similarity between the two trade marks in question. Mr. Justice Jacob found it essential to separate confusion from similarity.
Regarding section 10(2) of the Trade Marks Act 1994, Justice Jacob emphasized the following:253
The sub-section does not merely ask “will there be confusion?”; it asks: “is there similarity of goods”, if so, “is there a likelihood of confusion?”. The point is important. For is one elides the two questions, then a “strong” mark would get protection for a greater range of goods than a “weak” mark. For instance “Kodak” for socks of bicycles might well cause confusion, yet these goods are plainly dissimilar from films or cameras. I think the question of similarity of goods is wholly independent of the particular mark, the subject of the protection, or the defendant’s sign.
Similarly, in another British case, British Sugar254, the approach was also to assess the likelihood of confusion in two stages. The first step was to decide whether there was
251 R.P.C. 281 (1996); E.T.M.R. 118 (1997).
252 The Trade Marks Act 1994 is the law governing trademarks within the United Kingdom and the Isle of Man. It implemented the First Trade Mark Directive and replaced an earlier law, the Trade Marks Act 1938.
253 S.10(1) of the UK Trade Marks Act 1994 is worded as follows: “A person infringes a registered mark if he used in the cause of trade a sign where because
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark”.
254 British Sugar plc v. James Robertson & Sons, 1996 RPC 281.
similarity of goods. If there was, it was then necessary to ask whether the marks were so similar as to engender a likelihood of confusion. That is, the British Sugar test says that likelihood of confusion is to be dealt with separately from and subsequently to the questions of whether the sign is similar to the registered mark and whether the goods on which the sign is used are similar to those for which the mark is registered.
Clearly, this view is entirely opposed to the assessment of risk of confusion as determined by the ECJ.255
Lastly, the German Community trade mark Courts assessed the degree of similarity of the marks and the goods of services in each of the cases analyzed. Concerning the similarity of the marks, the German approach is that what matters is the overall impression made by the respective signs, with comparison not confined to their individual components. When one of two marks in question is part of the other, similarity is found only if the identical component dominates the more complex mark. In general, similarity is found only if the identical component "dominates" the more complex mark.
Such domination is made possible if the component is more distinctive than the rest of the mark. Descriptive or associative components are normally not dominant.
The German Courts also emphasized the distinctiveness of the senior mark, and in a slightly lesser degree, the association that the public might make between the two marks.
The German Bundesgerichtshof (Federal Supreme Court) confirmed that the original distinctiveness of an senior trade mark, which is relevant for the question of whether a junior mark falls into its scope of protection, and which, in the affirmative, results in a confirmation of a likelihood of confusion, is also determined by the status of registration.
If a number of more or less similar trade marks are registered for identical or similar goods and/or services without their owners taking any steps against the registration of more or less comparable trade marks, this might be an important indication that the mark at issue has a limited scope of protection, because it consists of used-up word elements of
255 Gert Wurtenberger, A Risk of Confusion in Community Trade Mark Law: First Contours in Case Law of the European Court of Justice and the Harmonisation Office, 21(10) E.I.P.R. 508-518 (1999)
minor original character.256
Moreover, the degree of attention of the relevant average consumer was considered in only a very low proportion of the German decisions. Of all cases analyzed, there was no consideration of whether there were actual incidences of confusion or whether the defendant acted in good or bad faith. One point that is worth mentioning is that regarding the existence of a likelihood of confusion between the marks held by the parties under Art. 9(1)(b) of the CTMR, the court in some cases saw no problem in relying on German as well as on European case law.
Also, in the Community trade mark Court cases analyzed, the three Member States Spain, UK and Germany assessed each factor in different proportions when determining the existence of a likelihood of confusion. The similarity between the marks in question and the similarity between the goods or services in question were factors that were always assessed in each of the Spanish, United Kingdom, and German cases analyzed in this thesis. The association that the public might make between the two marks in question was considered in all Spanish and UK cases analyzed, but only in 70% of the German cases analyzed in this thesis.
The distinctive character of the senior mark was analyzed in a very high proportion of the Community trade mark Court cases of these three Member States, being the highest percentage of 90% in Germany, followed by 85.7% in the United Kingdom, and 63.6% in the Spanish Community trade mark Courts.
The degree of attention of the relevant average consumer was a factor analyzed in only 20% of the German Community trade mark Court cases. However, the proportions of the analysis of this factor were much higher in Spain and in the United Kingdom, namely 90.9% and 71.4%, respectively.
Moreover, actual incidences of confusion were not a factor considered at all in the
256 German Federal Supreme Court [1999] N.J.W. 361.
German Community trade mark Court decisions analyzed in this thesis. In Spain, this factor was considered in only a very limited proportion of the cases, namely 9.1%. In the United Kingdom, however, this factor was assessed in a much higher proportion, namely 71.4%.
The factor of whether the owner of the junior mark acted in good faith was considered in only 9.1% of the Spanish Community trade mark Court decisions analyzed, while it was not considered at all in the United Kingdom and German Community trade mark Court decisions analyzed. Lastly, the existence of prior Community or national decisions involving conflicts between the same or similar marks was not considered at all in any of the analyzed cases of these three Member States.