Criteria for the assessment of a likelihood of confusion

can be appropriate to evaluate the importance attached to each by reference to the category of goods and the way they are marketed. It is possible that mere aural similarity could lead to a likelihood of confusion.⁸³

D. Marca Mode CV v. Adidas AG and Adidas Benelux BV

The main issue to be decided in Marca Mode v. Adidas⁸⁴, referred to the ECJ by the Dutch Hoge Raad (Supreme Court of the Netherlands), was the influence of a particularly distinctive character on the risk of confusion. In this case, the Dutch Hoge Raad inquired whether in the case of a particularly distinctive mark and where a third party uses a similar sign for similar goods, a likelihood of confusion could be presumed to exist due to the likelihood of association between the sign and the trade mark.

The Court stressed that even where an identity of goods, a high reputation and a possibility of association are given, confusion cannot be presumed. There must always be a positive finding of a likelihood of confusion by the national court on the basis of the facts and evidence put forward in the proceedings.⁸⁵ That is, the reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion in the strict sense, even if a trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public, or even where a third party, without the consent of the owner of the mark, uses, in the course of trade in goods or services which are identical with, or similar to, those for which the trade mark is registered, a sign which so closely corresponds to the mark as to give the possibility of its being associated with that mark.⁸⁶

E. Criteria for the assessment of a likelihood of confusion

83 Lloyd, supra note 78, at paragraph 28.

84 Case C-425/98, Marca Mode v. Adidas, 2000 E.C.R. I-4861.

85 Marca Mode, supra note 84, at paragraph 39.

86 Marca Mode, supra note 84, at paragraph 41.

In conclusion, the criteria developed by the European Court of Justice in these four cases are summarized below:

1. Global appreciation

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. The appreciation of the likelihood of confusion 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 between the goods or services identified”.

2. Interdependence between the factors

A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services. Therefore, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

It follows that, for the purposes of Article 4(1)(b) of the Directive, 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, in particular its reputation, is highly distinctive. Also, there may be a likelihood of confusion, notwithstanding a low degree of similarity between the marks, where the similarity of the goods or services covered is high and the senior mark possesses a strong distinctive character.

Moreover, the more distinctive the senior mark, the greater will be the likelihood of confusion.

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. It is therefore possible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the senior mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.

However, when the senior mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion.

3. Average consumer

For the purposes of global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.

It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question.

4. Visual, aural or conceptual similarity

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 reason is that the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details.

In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements,

taking account of the category of goods or services in question and the circumstances in which they are marked.

Mere aural similarity between trade marks may create a likelihood of confusion within the meaning of Article 5(1)(b) of the Directive.

5. Similarity of goods or products

It is important to stress that, for the purposes of applying Article 9(1)(b), even where a mark is identical to another with a highly distinctive character, it is still necessary to adduce evidence of similarity between the goods or services covered.

In assessing the similarity of the goods or services concerned all the factors relevant to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary.

6. Distinctive character

In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings.

In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from

chambers of commerce and industry or other trade and professional associations.

It follows that it is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character.

7. Association is not tantamount to confusion

A likelihood of confusion cannot be inferred, but must be proved. Even where an identity of goods, a high reputation and a possibility of association are given, confusion cannot be presumed. There must always be a positive finding of a likelihood of confusion by the national court on the basis of the facts and evidence put forward in proceedings.

Chapter 4 - Elements for the assessment of a likelihood of confusion in the Community trade mark Courts

There is no single court system ending up in one 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 as to the remedies for infringement (damages, provisional measures), also diverse provisions of substantive law. Rulings as to the validity of the trade mark, however, can have effect in all Member States of the European Union. Thus, different national court systems might be an obstacle to the achievement of consistent jurisprudence throughout the European Union.⁸⁷

Spain has designated one Community Trade Mark Court of First Instance and one of Second Instance; Great Britain has designated two of each category, and Germany eighteen of each. Due to the language barrier, in this thesis The author only focused on the Community trade mark Court cases of Spain, UK and Germany. In this chapter, eleven Spanish cases have been analyzed. These cases consist 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. A total of seven United Kingdom cases were analyzed, consisting of those United Kingdom Community trade mark Court cases after 2004 that concern the likelihood of confusion for the CTM. Lastly, ten German Community trade mark Court cases were analyzed, consisting of those German Community trade mark Court cases after 2007 that are related to the likelihood of confusion for the CTM.