Section 1 - Motive and purpose of research
Intellectual property refers to a number of different types of creations of the human intellect for which property rights are recognized, and their corresponding fields of law.
Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions;
and words, phrases, symbols, and designs.
Among the types of intellectual property are trade marks. A trade mark is a distinctive sign used by an individual, business organization, or other legal entity to identify that the products or services with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
Typically, a trade mark is a word, phrase, symbol or image, or a combination of all these elements. However, some trade marks fall into more non-conventional categories. For example, a smell or a shape can also obtain trade mark protection.
In some jurisdictions trade mark rights can be established either through actual use or through registration of the mark in the trade marks office or registry of that particular jurisdiction. Such trade mark registration confers upon the registered owner the right to exclusive use of the mark in relation to the products or services for which it is registered and also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or confusingly similar to the registered products or services. The test is always whether there is a likelihood of confusion between the two marks in question for the relevant products or services among the consumers of such products or services.
Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction. In Europe, a trade mark system called the
“Community trade mark system” grants trade mark protection through registration of a Community trade mark (hereinafter, CTM) for the whole territory of the European Community. This system was created in order to harmonize trade mark law throughout the European Community in order to achieve the goal of the common market, so such a unitary trade mark system was necessary. Otherwise, disparities in the trade mark laws among the European countries may hinder the free movement of goods and freedom to provide services and may distort competition within the common market.
The Member States of the European Union have all committed to trade mark law harmonization, and the law to be applied by the Community trade mark Courts is set out in the Community Trade Mark Regulation1 (hereinafter, CTMR). The European Court of Justice has developed in its case law the factors for the assessment of a likelihood of confusion. All Community trade mark Courts (which are the national courts assigned by the Member States to have jurisdiction over infringement actions) 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.
However, in reality this is not the case. It is very difficult to come to a real consistent and harmonized approach in the question of assessing the existence of a likelihood of confusion. 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” and still leave a lot of room for interpretation there is always room to achieve different decisions, so it is very difficult to have every single court draw the same conclusions and assess the circumstances in the same way.
Furthermore, as the Community trade mark Courts in different Member States have
1 Council Regulation No. 40/94 of 20 December 1993 on the Community trade mark.
different national laws and interests, and are all independent national courts, they cannot be ordered to render a decision in a certain way. Also, matters not covered by the CTMR and the rules of procedure are regulated by the national law of each particular Member State. 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. Moreover, there is no single court system ending up in one court of last instance that is competent for all Community trade mark infringement cases. However, rulings as to the validity of the trade mark 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.
Therefore, even though the Community trade mark Courts’ decisions cite the rules laid down by the European Court of Justice, there is still a great possibility for different decisions and of arriving at different results when faced with the question of assessing the existence of a likelihood of confusion. Once a Community trade mark court has been chosen in a particular Member State, there is no appeal to a court outside that Member State.
This thesis deals exclusively with the issue of a likelihood of confusion between trade marks and does not discuss dilution issues. It takes a look at the state of harmonization and at the influence of the European Court of Justice’s preliminary rulings on the national jurisprudence and practice in matters of assessing the existence of a likelihood of confusion. This thesis focuses on the case law of the German, Spanish and UK Community trade mark Courts regarding the standards for a determination of a likelihood of confusion in infringement proceedings.
Section 2 – Summary of existing relevant literature
Taiwan’s legal research has traditionally given American trade mark law
considerable emphasis, legal research on the European Community trade mark system is extremely lacking. In Taiwan, there are currently only a few theses on this topic in the country: first, a master’s thesis from year 2008 named “Internationalization Development of Trademark Registration – Studies on Madrid International Registered Trademarks and Community Trademarks” written by Hsiao-Ching Sun. However, the main focus of this thesis is not the determination of infringement for the CTM, but served as a general introduction to the international development of Trademark Registration and also as a comparison between the registration of the Madrid International Registered Trademarks and of the CTMs. The second is also a master’s thesis from year 2007 written by Juhsiang Wang with the topic “The Legislation and Application of Trademark Dilution Theory – Focusing on the Laws of the United States and the European Union”. Last, a master’s thesis from year 2002 written by I-Min Chou, whose topic was “The Comparative Study on the Trademark Examination System on the Application Stage of So-Called ‘Absolute Review System’ and ‘Relative Review System’”. Just like the first thesis mentioned, these last two theses concern in part the Community trade mark system, but with no focus on the infringement of the CTM.
Section 3 - Research method and structure of the present thesis
Research on the Community trade mark system is highly important but there is unfortunately a lack of related research in this country. This thesis focuses on the assessment of a likelihood of confusion for the CTM. The likelihood of confusion is the specific condition for the protection of a CTM during infringement proceedings. Certain national courts in each Member State are designated as “Community trade mark Courts”
with exclusive jurisdiction for infringement to review such infringement proceedings.
A. Research method
This thesis focuses on the case law of the German, Spanish and United Kingdom Community trade mark Courts regarding the standards for a determination of a likelihood of confusion in infringement proceedings. A total of 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. Following the analysis of these Community trade mark Court cases, the author analyzes the proportions in which each standard for the existence of a likelihood of confusion are assessed for each of these three Member States.
B. Structure of the present thesis
Chapter 2 starts with an introduction to the CTM system, after which its advantages and also the relevant major regulations to this system are described. This thesis then emphasizes the applicable provisions because the focus of this research is on the assessment of a likelihood of confusion for the CTM. Moreover, the Community trade mark Courts have exclusive jurisdiction for CTM infringement cases, and thus, the last section of this chapter deals with the territorial jurisdiction of the Community trade mark Courts and the legal effects of their decisions.
Chapter 3 deals with the factors for the assessment of a likelihood of confusion that were developed in the European Court of Justice’s case law and also during the registration proceedings in the Office for the Harmonization of the Internal Market.
Moreover, a comparison is made between the factors for the determination of a likelihood of confusion by the European Court of Justice and by the Board of Appeals of
the Office for Harmonization in the Internal Market, hereinafter OHIM2. Lastly, the author also points out the main differences between the United States and in the European Community regarding the factors for the determination of a likelihood of confusion.
2 The Office for Harmonization in the Internal Market (Trade Marks and Designs), or OHIM.