The United States Courts of Appeals have devised various tests to determine the likelihood of confusion. Each Circuit Court looks at a different list of factors that are largely similar with only slight differences. The most famous the list of factors to be considered when determining a likelihood of confusion comes from Polaroid
Corporation v. Polarad Electronics Corporation
257, a case from the Second Circuit.In the Polaroid case, the Second Circuit listed the following factors as being determinative of the likelihood of consumer confusion. These are commonly called the Polaroid factors, named after the Second Circuit case:
1. The strength of the senior mark;
2. The degree of similarity between the two marks;
3. The degree of similarity between the products or services covered by the marks;
4. The likelihood that the plaintiff will bridge the gap;
5. Evidence of actual confusion of consumers;
257 Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492 (2nd Cir.), cert. denied, 368 U.S. 820 (1961).
6. The defendant’s good faith in adopting the mark;
7. The quality of the defendant’s product or service; and 8. Consumer sophistication.
In the table below, the left column displays the Polaroid factors for the assessment of a likelihood of confusion, while the right column displays the factors for the assessment of a likelihood of confusion followed by the ECJ and the OHIM.
USA (Polaroid, 2nd Circuit) European Union
All factors must be considered. Likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. Likelihood of confusion depends in particular on: the recognition of the trade mark on the market, the association that the public might make between the two marks, and the degree of similarity between the signs and the goods (ECJ, OHIM).
The strength of the senior mark. The recognition of the trade mark on the market (ECJ).
The degree of similarity between the two marks.
The degree of similarity between the signs (ECJ).
The degree of similarity between the products or services covered by the marks.
The degree of similarity between the goods (ECJ).
Evidence that the senior user may
“bridge the gap” by developing a product for sale in the market of the alleged infringer’s product.
Evidence of actual consumer confusion. Incidences of actual confusion (OHIM).
(Coexistence of the conflicting marks on the market in the same territory).
Evidence that the junior mark was adopted in bad faith.
The respective quality of the products.
The sophistication of consumers in the relevant market.
The degree of sophistication and attention of the relevant public (ECJ, OHIM).
Prior decisions by Community or national authorities involving conflicts between the same (or similar) marks (OHIM).
The association that the public might make between the two marks (ECJ).
[Table by author]
One basic difference between the factors applied by the Community trade mark Courts and the United States Courts when assessing the existence of a likelihood of confusion is that the US Courts put an emphasis on the degree of the strength of the senior mark. That is, the degree of distinctiveness of the senior mark is a very important factor and is always assessed. However, this was not a factor that was analyzed in every of the Community trade mark Court cases analyzed. As mentioned earlier, 90% of the German Community trade mark Courts, followed by 85.7% in the United Kingdom Community trade mark Courts and 63.6% in the Spanish
Community trade mark Courts considered this factor.
Moreover, in the case of the CTM, the appreciation of the likelihood of confusion depends in particular on the recognition of the trade mark on the market, on the association that the public might make between the two marks and the degree of similarity between the signs and the goods.258 That is, the association that the public might make between the two marks is a crucial factor that the Courts should apply when assessing the existence of a likelihood of confusion. Even though it is considered a crucial factor and it was applied in all Spanish and UK cases analyzed, it was only applied in 70% of the German Community trade mark Court cases that were analyzed in this thesis. However, this factor is not particularly mentioned by the United States Courts when determining a likelihood of confusion.
There is also the difference that in the European Community, a CTM is given protection when there is a “double identity”. That is, when the two marks are identical and also the goods or services are identical, the protection afforded by the registered CTM is absolute. The owner of the CTM is entitled in such a case to prevent any third party not having his consent from using in the course of trade any sign which is identical to its CTM in relation to goods or services which are identical with those for which the CTM is registered.259 However, the US Courts still apply all the factors even when there is a double identity. That is, protection for the registered CTM does not immediately follow from the identity between the two marks in question and the identity between the goods or services for which the CTM is registered and the other mark is used.
258 Sabèl, supra note 59, at paragraph 22.
259 CTMR, supra note 1, preamble 7 and Art. 9(1)(a).
Chapter 6 – Conclusions
In this thesis, the author has introduced the CTM system and the elements for the assessment of a likelihood of confusion developed by the ECJ and the OHIM.
The Member States of the European Union have all committed to trade mark law harmonization, which is crucial to achieving consistent jurisprudence throughout the European Union so that free movement of goods and freedom to provide services within the common market is not hindered.
The Community trade mark Courts, which are national courts designated by each Member States to hear cases related to CTMs, have to follow the rules set out in the CTMR and the case law of the European Court of Justice, where the European Court of Justice developed the factors for the assessment of a likelihood of confusion. Even though all Community trade mark Courts should have a unanimous and consistent parameter 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 of Justice, in reality this is not the case.
The Community trade mark Courts have to make an overall assessment taking into consideration various criteria for the assessment of a likelihood of confusion developed by the European Court of Justice. Since most of the criteria developed by the European Court of Justice are uncertain legal concepts, they still leave room for interpretation and it is very difficult to have every single court draw the same conclusions and assess the circumstances in the same way.
In this thesis, a total of twenty eight Community trade mark Court cases were analyzed: eleven Spanish cases, consisting of all Spanish Community trade mark Court cases between 2007 and 2009 that are related to the analysis of a likelihood of confusion for the CTM; seven United Kingdom cases, consisting of those United Kingdom Community trade mark Court cases after 2004 that concern the likelihood of confusion
for the CTM; and lastly, ten German Community trade mark Court cases, consisting of those German Community trade mark Court cases after 2007 that are related to the likelihood of confusion for the CTM.
When examining whether the public is likely to be confused, the ECJ has pointed out that the likelihood of confusion has to be "appreciated globally taking into account all factors relevant." However, from the cases analyzed in this thesis we observe that not in all cases were all relevant factors assessed. Each of the three Member States’ Community trade mark Courts assessed the different relevant factors in different proportions. This implies that it would be possible for a trade mark to be declared valid in the courts of one Member State and invalid in the courts of another.
There is no single court system serving as the only court of last instance that is competent for infringement cases, but there are in fact 27 national court systems with different sets of procedural law and different remedies for the infringement of a CTM.
The reality is that such different national court systems might decide in different ways for a same case can be an obstacle to the achievement of a consistent trade mark jurisprudence.
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