The Boards of Appeal are responsible for deciding on appeals from decisions of the examiners, Opposition Divisions, Administration of Trade Marks and Legal Division and Cancellation Divisions.51 For the reasons outlined by Advocate General Francis Jacobs in his opinion in the Sabèl case, the standards developed by the Court to be observed in determining risk of confusion will have to be applied by the OHIM as well.
Basically these criteria have to be applied in the same way when the national courts decide on infringement cases - irrelevant whether they apply CTM law or national law, as by the directive the trade mark law of the Member States must be harmonized. These factors were developed from the standards set up by the ECJ in its four leading cases related to the assessment of a likelihood of confusion. Thus, both set of factors are consistent, although the OHIM has developed a few additional factors that will be introduced in this section.
The Opposition Guidelines52 of the OHIM list a number of principles that have been derived from practice, in particular from the cases decided by the Opposition Division and the Boards of Appeal. While these principles must be applied in general, it may
50 Office for Harmonization in the Internal Market.
51 CTMR, supra note 24, at Art. 130.
52 http://oami.europa.eu/ows/rw/pages/CTM/legalReferences/guidelines/guidelines.en.do
happen that exceptions to these principles may apply depending on the specific case. A likelihood of confusion depends in particular on the relevant factors set out below:
1. Degree of similarity of the goods and services in question; where the applicant has
requested the opponent to furnish proof of use, those goods and services have to be compared for which the opponent has established use;2. Degree of similarity of the signs;
3. Degree of distinctiveness (inherent or acquired), strength or reputation of the senior
mark;4. The degree of sophistication and attention of the relevant public, i.e. of the actual or
potential customers of the category of goods or services in question;5. Coexistence of the conflicting marks on the market in the same territory;
6. Incidences of actual confusion;
7. Prior decisions by Community or national authorities involving conflicts between the
same (or similar) marks.53The question as to whether or not there is a likelihood of confusion has to be determined in the light of the preceding factors and of any other factors that may be relevant in the specific case.
The Opposition Division takes into consideration the overall appearance of the two trade marks in a visual or phonetic respect, and also considers their potential meaning. It also emphasizes that, in particular, the different and dominant elements have to be considered.
Moreover, in determining the similarity of goods and services, which is one of the relevant factors for determining a likelihood of confusion, the following relevant factors were identified: nature, purpose, method of use, complementary character, and
53 Opposition Guidelines, Part C, Part 2, Chapter 2 Identity and likelihood of confusion: A. General Remarks, III-4 Assessment of likelihood of confusion: Overview of the criteria, http://oami.europa.eu/ows/rw/resource/documents/CTM/guidelines/opposition_general_en.pdf.
competitive character, channels of distribution, relevant public, and usual origin of the goods/services. In particular, the criteria defining the likelihood of confusion between the goods or services are their composition, functioning principle, physical condition, appearance, and value.
In addition, the OHIM Opposition Guidelines have analyzed and defined the term
“relevant public” in the factors for determination of a likelihood of confusion.54 A likelihood of confusion on the part of the public includes all the instances where the public may come into contact with the senior and the junior mark or with both. Thus, consideration must be given to pre-sale confusion, e.g. confusion arising in the course of advertising of goods or services; to confusion at the time or in the context of purchasing the goods or services, such as when making purchases in a supermarket, by telephone, by mail-order, or through the Internet; and to post-sale confusion, i.e. to confusion arising after the goods or services have been purchased; this is relevant for example when packaged goods are purchased and the confusion arises only when the goods are unpacked; or where the goods or services are purchased by “discriminating” purchasers but are actually used by a broader category of users (members of the family, etc.).
The European Court of Justice has so far mainly equated the relevant public with the average “consumer”. The Opposition Guidelines state that the term “consumer” should be taken to include the “ultimate” consumer, who may be “consuming” the goods or services in his private activity, or who may be a professional “ultimate” consumer. However, there are also goods/services that are bought by persons in the production or distribution (i.e.
wholesalers or retailers) chain, which are usually not referred to as “consumers”. The broader term average “customers” appears to be better suited to include those in the production and distribution chain. The term customers always refers to the actual and the
potential customers, that is, the customers that currently are or in the future may be
purchasing the goods/services. The potential customers include those customers who, in54 Ibid., at III-6 Relevant public.
the usual course of events, are likely to buy the goods/services (e.g. a family member buys a good or service he/she does not need for another family member).
Furthermore, if a significant part of the relevant public may be confused as to the origin of the goods, this is sufficient to establish a likelihood of confusion. There may be several distinct groups of customers for one and the same good or service, and all may have a substantial size, i.e. there may be several relevant publics. In such a case, each of these distinct publics may have characteristics of their own. A likelihood of confusion may then differ, depending on the respective group. If the examiner finds a likelihood of confusion with respect to one group of a substantial size only, this will be a sufficient basis for finding a likelihood of confusion.
The OHIM will also take into consideration the existence of more or less similar registered trade marks when considering risk of confusion between two marks in opposition proceedings.
Finally, the similarity of the goods and services in question is assessed from a commercial perspective. The examiner must consider the marketplace realities that characterize the relationship of the goods and services under comparison. These marketplace realities will again often also play an important role in the global assessment of a likelihood of confusion. For instance, the features of the goods may have an impact on the degree of attention of the customer: in the cases of expensive purchases (such as cars), the degree of attention is usually higher than where the buying behavior is casual (e.g. sweets).55 Finally, the relevant moment for assessing a likelihood of confusion is the time when the decision is taken.56
The factors for the assessment of a likelihood of confusion in the Opposition Guidelines of the OHIM are mostly the same as those stated in the case law of the ECJ.
The small difference is that the OHIM includes the coexistence of the conflicting marks
55 Opposition Guidelines, Part C, Part 2, Chapter 2 Identity and likelihood of confusion: A. General Remarks, III-8 Similarity of goods/services.
56 Ibid., at III-9 The relevant point in time.
on the market in the same territory, incidences of actual confusion, and also prior decisions by Community or national authorities involving conflicts between the same or similar marks. These three factors are not within those developed in the case law of the ECJ for the assessment of a likelihood of confusion.