Section 2 - Likelihood of confusion in the case law of the European Court of
B. Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc
The case Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (hereinafter,
“Canon v. MGM”68) was built on the Sabèl ruling. This case, also referred to the ECJ from Germany, turned on whether there was a likelihood of confusion between the senior registered work mark CANON for pre-recorded video tapes and the applicant’s sign CANNON for blank video tapes.69 This was a case in which the competing marks were both visually and aurally (but not conceptually) similar, unlike Sabèl, which was a case in which the principal similarity between the marks was conceptual.
The ECJ did have the chance in Canon v. MGM to "give guidance on the assessment of similarity of goods as an element necessary to confirm or deny risk of confusion." The
64 Sabèl, supra note 59, at paragraph 23 65 Sabèl, supra note 59, at paragraph 24.
66 Sabèl, supra note 59, at paragraphs 24 and 25.
67 Sabèl, supra note 59, at paragraph 26.
68 Case C-39/97, Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer, 1998 E.C.R. I-5507.
69 Canon, supra note 68, at paragraphs 4 and 5.
Supreme Court of Germany asked the ECJ whether, on a proper construction of Article 4(1)(b) of the Directive, the distinctive character of the senior trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion.
The ECJ analysis began by quoting the tenth recital of the First Directive which stresses the importance of interpreting the concept "similarity" in relation to "likelihood of confusion," where a likelihood of confusion is dependent upon many factors, inter alia, the recognition of the trade mark by the public as well as the extent of similarity between both the senior mark, the third party mark, and the goods covered.
When examining whether the public is likely to be confused, such "likelihood" has to be "appreciated globally taking into account all factors relevant."70 Following the proposition espoused in Sabèl, namely that the "more distinctive the senior mark, the greater the risk of confusion," the ECJ concluded that if there is a lesser degree of similarity between the goods or services covered, and if the marks have a high degree of similarity and the senior mark has a distinctive character, registration may be refused.71 This determination by the ECJ answered the Bundesgerichtshof's question affirmatively, recognizing that the distinctive character of a senior trade mark, e.g., its reputation, can be taken into account when determining the similarity between the goods or services covered by the rival trade marks, and can be sufficient to give rise to the likelihood of confusion.
In assessing the similarity of the goods and services, all relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, the purpose for which they are used and their method of use, and
70 Canon, supra note 68, at paragraph 16 (. Conducting this "global assessment" involves a consideration of the relationship between the relevant factors, such that a lesser degree of similarity between the trade marks may be offset by a greater degree of similarity between the goods or services, and vice versa.
71 Canon, supra note 68, at paragraphs 18 and19 (citing Sabèl, at paragraph 24).
whether they are in competition with each other or are complementary.72 Further criteria to be observed in the assessment of similarity of goods and services are the product’s manufacturers and their relevant distribution channels and retail outlets.73
Moreover, there is interdependence between the relevant factors and in particular a similarity of the marks and the similarity of the goods. A lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the facts and circumstances of the case.74
In particular, the distinctive character of the senior mark and in particular its reputation must be taken into account when determining whether the similarity between the goods and services is enough to give rise to the likelihood of confusion.75 Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character.
Consequently, a lesser degree of similarity between the goods and services covered may still cause risk of confusion if the marks are very similar and the senior mark, in particular because of its reputation, is highly distinctive. It also follows that registration of a trade mark may have to be refused, despite a lesser degree of similarity between the goods or services covered, where the marks are very similar and the senior mark has a reputation and is highly distinctive.76
Furthermore, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. By contrast, there can be no such likelihood where the public does not think that the goods come from the same undertaking (or from economically linked undertakings).77
72 Canon, supra note 68, at paragraph 23.
73 Canon, supra note 68, at paragraph 28.
74 Canon, supra note 68, at paragraph 17.
75 Canon, supra note 68, at paragraph 24.
76 Canon, supra note 68, at paragraphs 18 and 19.
77 Canon, supra note 68, at paragraphs 29 and 30.