國立交通大學
科技法律研究所
碩士論文
Analysis of the Assessment of a Likelihood of
Confusion for the Community Trade Mark
研究生: 陸大瑜
指導教授：許耀明 博士 & 王敏銓 博士
Abstract
In Europe, the “Community trade mark system” was created in order to harmonize trade mark law throughout the European Community. This system grants trade mark protection through registration of a Community trade mark for the whole territory of the European Community.
This thesis takes a look at the state of trade mark law harmonization in the European Union and at the influence of the European Court of Justice’s preliminary rulings on the Member States’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.
Keywords
: Community trade mark, CTM, likelihood of confusion, trade mark law, harmonization, ECJ, preliminary rulings.Table of Contents
Abstract...i
Chapter 1 - Introduction...1
Chapter 2 – An Introduction to the Community trade mark system...7
Chapter 3 – Elements for the assessment of a likelihood of confusion in the OHIM and the ECJ ...23
Chapter 4 - Elements for the assessment of a likelihood of confusion in the Community trade mark Courts...40
Chapter 5 – Analysis of the elements for a likelihood of confusion...101
Chapter 6 – Conclusions ... 110
Index
Abstract...i
Chapter 1 - Introduction...1
Section 1 - Motive and purpose of research...1
Section 2 – Summary of existing relevant literature...3
Section 3 - Research method and structure of the present thesis...4
A. Research method ...4
B. Structure of the present thesis ...5
Chapter 2 – An Introduction to the Community trade mark system...7
Section 1 - What is a Community trade mark? ...7
Section 2 - Major Regulations relevant to the Community trade mark system ...10
A. The First Trade Marks Directive ...10
B. The Community Trade Mark Regulation (CTMR) ...12
Section 3 - Applicable provisions in the assessment of a likelihood of confusion ..14
A. Assessment of a likelihood of confusion during the registration process....15
B. Assessment of a likelihood of confusion during infringement proceedings 15 Section 4 – The Community trade mark Courts ...16
A. The Community trade mark Courts: territorial jurisdiction ...18
B. The legal effect of the Community trade mark Courts’ judgments ...21
Chapter 3 – Elements for the assessment of a likelihood of confusion in the OHIM and the ECJ ...23
Section 1 – Likelihood of Confusion in the Board of Appeals of the OHIM...23
Section 2 - Likelihood of confusion in the case law of the European Court of Justice...27
A. Sabèl BV v. Puma AG, Rudolf Dassler Sport ...29
B. Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc...30
C. Lloyd Schuhfabrik Meyer v. Klijsen Handel BV...33
D. Marca Mode CV v. Adidas AG and Adidas Benelux BV ...35
E. Criteria for the assessment of a likelihood of confusion ...35
Chapter 4 - Elements for the assessment of a likelihood of confusion in the Community trade mark Courts ...40
A. Spain ...40
1. Dart Industries v. Eva Moreno Arjona (16 June 2009)...40
2. The O Company NV v. Aigues del Montseny SA (09 September 2008)...43
3. George V Restauration v. Compañía Hostelera Maktub (04 June 2008) ...45
4. L’ORÉ AL SA v. Yesensy España SL (04 December 2007) ...46
5. WV Beheer BV v. Arfasy SL and Disconet Salou SL (05 November 2007) ..47
6. Sogico SA v. Bambus 2000 SL, et al. (13 July 2007) ...48
7. ENTERPRISE RENT-A-CAR COMPAÑ Y v. ENTREPRISE RENT-A-CAR SL (12 July 2007)...50
8. Fibertex A/S v. Fibres Fibertex SL (02 July 2007)...51
9. Les Editions Albert Rene S.A.R.L. v. Las Tabernas de Asterix SL (15 March 2007) ...52
10. Canna B.V. v. Servideu S.L. y Productos Flower S.A. (27 February 2007) .54 11. Christ Juweliere und Uhrmacher Seit 1863 GMBG v. Ramesh Jeswani Jeswani and Gold Kramer SL (02 February 2007) ...55
B. United Kingdom...58
1. Whirlpool Corporation & Ors v. Kenwood Ltd [2008] EWHC 1930 (Ch) (04 August 2008) ...58
2. Hotel Cipriani SRL v. Cipriani (Grosvenor Street) Ltd 2008 EWHC 3032 (Ch) (9 December 2008) ...61
3. Tubzee Ltd v. Safron Foods Ltd [2008] EWHC B15 (Ch) (07 October 2008)65 4. Julius Sämann Ltd & Ors v. Tetrosyl Ltd [2006] EWHC 529 (Ch) (17 March 2006) ...67
5. French Connection Ltd v. Fresh Ideas Fashion Ltd [2005] EWHC 3476 (Ch) (03 November 2005) ...71
6. Electrocoin Automatics Limited v. Coinworld Limited [2004] EWHC 1498 (Ch) (29 June 2004) ...73
7. Compass Publishing BV v. Compass Logistics Ltd. [2004] EWHC 520 (Ch) (24 March 2004) ...74
C. Germany...78
1. Stella, 25 W (pat) 29/06 (07 August 2008)...78
2. Smile v. SmileCompany, 25 W (pat) 17/06 (29 July 2008) ...80
3. Bellawa v. Bellave, 24 W (pat) 64/06 (29 April 2008) ...83
4. Butterfly v. Butterfly System, 27 W (pat) 74/07 (28 April 2008) ...85
5. Beverage bottle, W (pat) 23/06 (23 April 2008)...86
6. Gallus v. Gaius, 26 W (pat) 89/07 (22 April 2008)...88
7. SOGRAPE v. Sograf, 26 W (pat) 84/06 (05 March 2008) ...90
9. Mercedes Benz v. SANYI, 28 W (pat) 115/07 (05 December 2007)...94
10. CANNABIS, 26 W (pat) 78/04 (11 October 2007) ...96
Chapter 5 – Analysis of the elements for a likelihood of confusion...101
Section 1 - Analysis of the Community trade mark Courts’ judgments and observations of their differences...101
Section 2 - Comparison between the EU standards and the US standards ...106
Chapter 6 – Conclusions ... 110
Chapter 1 - Introduction
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
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
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.
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.
Chapter 2 – An Introduction to the Community trade mark system
In order to create a common market in Europe it is necessary to harmonize trade mark law throughout the European Community. To achieve the goal of the common market, the CTMR created the Community trade mark system, which is a unitary trade mark system that governs the procedural and substantive provisions of trade mark law throughout the European Union.
Section 1 - What is a Community trade mark?
The CTM is a sign for identifying and distinguishing goods or services valid throughout the European Union and registered in the OHIM in accordance with the provisions of the CTMR.3 The OHIM is established by Article 2 of the CTMR.
The three basic principles of CTM law are "autonomy" — the CTM law is a body of European law not subject to national law unless specified; "coexistence" — CTM law does not replace or pre-empt national trade mark law, and CTMs coexist with national trade marks; and "unitary character" — CTMs are unitary and have the same effect throughout the European Community.4
The main benefit of the Community system is that it gives its owner a uniform right applicable in all Member States of the European Union through a single procedure which simplifies trade mark policies at European level. Traders are able to protect their marks throughout the Community on the basis of a single application, rather than having to file separate applications in each of the Member States. In other words, the CTM has a unitary character, meaning that it is valid in the entire European Community. The CTM is unitary in all respects: the application and the registration extend automatically to all
3 CTMR, supra note 1, at Art. 1(1): A trade mark for goods or services which is registered in accordance with the conditions contained in this Regulation and in the manner herein provided is hereinafter referred to as a ‘Community trade mark’.
4 Alexander Von Mühlendahl, Community Trade Mark Riddles: Territoriality and Unitary Character, (30)(2) E.I.P.R. 66-70 (2008).
Member States of the European Community indivisibly; the effect of an invalidation, a refused application, or the expiry of the CTM necessarily is for the entire Community. That is, if a ground for refusal exists only in part of the Community, the OHIM will refuse the entire CTM application. Moreover, the CTM is one single asset and can only be transferred for the whole of the Community, not with respect to individual States.5 While the CTM presents certain obvious advantages to trade mark applicants, the unitary character of the CTM also presents certain risks, for example, a single invalidation action may cause the mark to be invalid for the whole territory of the European Union.6
The CTM may be obtained for a sign which is either applied for directly at the OHIM or which has been previously applied for through a national office. The national office is obliged to forward the application to the OHIM within two weeks.7 Those applying for a CTM must be a national of or domiciled or a business in an Member State or a country which is a party to the Paris Convention8 or to the World Trade Organization (WTO), or be a national of a state which accords reciprocal protection9. This application may be filed in any of the official languages of the European Union, but should also specify a second language (chosen from the five official languages of the OHIM: English, French, German, Italian, or Spanish) in which opposition proceedings may be conducted.
Examination at the OHIM is restricted to an inquiry of whether the application complies with the absolute grounds of refusal (for example, a lack of any distinctive character, or the fact that the shape results from the nature of the goods themselves, among others)10, which will apply to the mark across the whole Community, even if the
5 CTMR, supra note 1, at Art.1(2): A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation.
6 Frederick M. Abbott et al., International Intellectual Property in an Integrated World Economy 379 (2007).
7 CTMR, supra note 1, at Art. 25(2).
8 See Paris Convention for the Protection of Industrial Property of March 20, 1883. 9 CTMR, supra note 1, at Art. 29.
absolute grounds of refusal only arise in one Member State.11 Where the application fails to comply with the absolute grounds for refusal, the application may be amended or withdrawn.12 Successful registration of the CTM at the OHIM lasts for ten years13 and may be renewed for further periods of ten years.14
Once an application has been successfully examined, it will then be published in the Community Trade Marks Bulletin.15 Within three months of publication, the application may be opposed on relative grounds. Only the owners of senior trade marks and their licensees, the owners of trade marks, and the owners of senior marks or signs are entitled to bring opposition proceedings.16 If the application to the OHIM is rejected or withdrawn, it may be converted back into a series of national applications which retain the filing date used at the OHIM.17
Furthermore, the CTM system leaves the national trade mark systems of Member States unaffected. Enterprises are free to file national trade mark applications, a CTM application, or both. National trade mark registrations and the rights conferred by it are not affected by the CTM. The CTMR does “not abolish national trade mark protection; rather, it creates a mark that co-exists with national trade marks”.18 However, senior national trade marks possess senior rights against a CTM, and vice versa.
The CTM fulfills three essential functions of a trade mark at European level. First, it identifies the origin of goods and services, which is the most important function. “Without trade marks, manufacturers would have no incentive to produce goods of high quality because consumers would have no way of identifying goods emanating from a particular source and would not be able to reward a supplier of quality products with their
11 CTMR, supra note 1, at Art. 7(2). 12 CTMR, supra note 1, Art. 38(3), Art. 44. 13 CTMR, supra note 1, at Art. 46.
14 CTMR, supra note 1, at Art. 47. 15 CTMR, supra note 1, at Arts. 40 and 85. 16 CTMR, supra note 1, Art. 42.
17 CTMR, supra note 1, Art. 108.
18 Marshall A. Leaffer, The New World of Intellectual Trademark Law, 2 Marq. Intell. Prop. L. Rev 1, 25 (1998).
continued patronage.”19 Not only manufacturers and traders have an interest in preserving the origin function of trade marks, but customers as well share the same interest in avoiding confusion as to the commercial origin of goods and services.
But we see that the two most important pieces of Community legislation on trade marks, the First Trade Mark Directive (hereinafter, “First Directive”)20 and the CTMR, state in their preambles that the function of a trade mark is “in particular to guarantee the trade mark as an indication of origin”.21 The words “in particular” suggest that the origin function is not the only function. Indeed, another function of the CTM is to guarantee consistent quality through evidence of the company’s commitment vis-à-vis the consumer. Lastly, it is a form of communication, a basis for publicity and advertising. Sometimes, the trade mark owner may be entitled to rely on the trade mark to prevent advertising by unauthorized dealers which might damage the reputation of the mark, without, however, creating any confusion as to the origin of the branded goods.22
Section 2 - Major Regulations relevant to the Community trade mark system
In this section the First Directive23 and the CTMR24 are introduced.
A. The First Trade Marks Directive
On March 25, 1957, the Treaty of Rome was signed, creating the European Economic Community. The recitals of the treaty state that its purpose is “to ensure the economic and social progress of the European countries by common action to eliminate the barriers which divide Europe”. The treaty calls for “concerted action to remove the
19 David T. Keeling, Intellectual Property Rights in EU Law, Volume I: Free Movement and
Competition Law 147 (Oxford University Press ed.) (2003).
20 Council Directive No. 89/104 of 21 December 1988 to Approximate the Laws of the Member States Relating to Trade Marks.
21 First Directive, supra note 20, at tenth recital in the preamble; CTMR, supra note 1, at seventh recital in the preamble.
22 Keeling., supra note 19, at 151. For example, see Case C-337/95, Christian Dior v. Evora, 1997 ECR I-6034; and Case C-63-97, BMW v. Deenik, 1998 ECR I-925.
23 First Directive, supra note 20. 24 Supra note 1.
existing obstacles to trade in order to guarantee “steady expansion, balanced trade and fair competition.”25 Soon after the creation of the treaty, it was recognized that in order to create a common market in Europe it would be necessary to harmonize trade mark law throughout the continent. This harmonization would necessarily be substantive in nature, as the ultimate goal was the creation of a unitary trade mark system to govern the entire European Community.
It may be helpful to think of the benefit and necessity of a unitary trade mark system in economic terms. National, as opposed to unitary, trade mark law presents at least two barriers to a common market: first, it increases transaction costs by forcing the mastery of a number of distinct legal regimes, and second, even goods that have been introduced to an industrial market, despite the increased transaction costs, could suffer from the application of national trade mark law to stop the free flow of goods within the market.
The First Directive to approximate the laws of the Member States relating to trade marks was adopted under Article 100(a) of the EC Treaty and approved by the Council in 21 December 1988.26 In its introductory considerations it is pointed out that... the trade mark laws at present applicable in the Member States contain disparities which may impede the free movement of goods and freedom to provide services and may distort competition within the Common Market. It did not intend to undertake a full-scale approximation of the trade mark laws of the Member States, but was only a measure to approximate “those national provisions of law which most directly affect the functioning of the internal market”.27 In other words, the Directive was designed to harmonize the disparities in trade mark law that had the potential of impeding the free movement of
25 Treaty of Rome, at recitals.
26 Now Art.114(a) of the Treaty on the Functioning of the European Union (TFEU) and formerly Article 95(a) of the EC Treaty, which state that the Council, acting by means of a unanimous vote on a proposal of the Commission, shall issue directives for the approximation of such legislative and administrative provisions of the Member States as have a direct incidence on the establishment or functioning of the Common Market.
27 First Directive, supra note 20, at third recital: “Whereas it does not appear to be necessary at present to undertake full-scale approximation of the trade mark laws of the Member States and it will be sufficient if approximation is limited to those national provisions of law which most directly affect the functioning of the internal market’… ”
goods and the provision of services within the European Union. In essence, the Directive harmonizes the “conditions for obtaining and continuing to hold a registered trade mark”28 and the rights conferred by a trade mark.29.
However, the Member States had discretion regarding the precise way in which the Directive would be implemented in national law. Each state would remain responsible for granting trade mark registrations, and the courts of each Member State would interpret national law in light of the Directive (subject to referral to the European Court of Justice). 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 another30, thus hindering harmonization of trade mark law throughout the European Community.
B. The Community Trade Mark Regulation (CTMR)
As a way to further achieve the goal of trade mark harmonization, the Council Regulation (EC) No. 40/94 of 20 December 1994 on the Community trade mark (the Community Trade Mark Regulation) was adopted. It is the fundamental text for the CTM system. The Trade Mark Directive was never intended to be an end in and of itself. Rather, it was viewed as a necessary precursor to the CTMR, which created a unitary trade mark system that governs the procedural and substantive provisions of trade mark law throughout the European Union.
The CTMR put in place a system under which an applicant may, by filing a single application, obtain one CTM registration according rights throughout the entire territory of the European Union31 by means of one application submitted to one office under one procedure governed by one law.32 The CTMR took a substantially different approach from the First Directive. The Trade Marks Directive focused on harmonizing the
28 First Directive, supra note 20, at seventh recital: Whereas attainment of the objectives at which this approximation of laws is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark are, in general, identical in all Member States [… ].
29 First Directive, supra note 20, at Art. 5, 6 and 7. 30 Frederick M. Abbott, supra note 6, at 379. 31 CTMR, supra note 1, Art. 1(2).
substantive national trade mark laws of the Member States, but the CTMR additionally makes detailed provision regarding the processes of application, examination, opposition, cancellation and enforcement.
Being a Regulation, it is directly applicable as the law of the Member States, and national legislatures do not have discretion as to how the rules will be implemented.33 And as a text of Community law, it is governed by Article 249 of the EC Treaty34 as well as by the principles which result from that Article, which means: direct applicability and supremacy of Community law.
Article 4 of the CTMR provides that a “Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of another undertakings.” This is a non-exhaustive list of the sorts of signs which can be registered as CTMs (all signs can potentially constitute a trade mark, including words, drawings, numbers and letters, the shape of goods, sounds, color combinations, and even smells and tastes). The only two conditions are that the sign must be capable of being represented graphically, and that the sign must distinguish the goods or services of one undertaking from those of other undertakings. If a sign cannot meet this requirement (or is devoid of any distinctive character, is a descriptive sign, is a customary sign, is a descriptive shape, is contrary to public policy or to accepted principles of morality, is deceptive, is an official or public emblematic trade mark, or is a geographical indication), these are absolute grounds to refuse its registration pursuant to Article 7(1) of the CTMR.35
Moreover, Article 8 of the CTMR relates to grounds on which registration of a CTM
33 Frederick M. Abbott, supra note 6, at 379.
34 Now Art.288 of the Treaty on the Functioning of the European Union (TFEU) and formerly Article 189 of the EC Treaty: “A regulation shall have general application. It shall be binding in its entirety and directly applicable in all Member States.”
may be refused, arising from some conflict with the rights of another party.36
Section 3 - Applicable provisions in the assessment of a likelihood of confusion
The value of a trade mark depends on the scope of protection a trade mark system guarantees in cases of collision. In HAG II Advocate General Jacobs stated that “A trade mark can only fulfill that role if it is exclusive. Once the owner is forced to share the mark with a competitor, he loses control over the goodwill associated with the mark. The reputation of his own goods will be harmed if the competitor sells inferior goods. From the consumer’s point of view, equally undesirable consequences will ensue, because the clarity of the signal transmitted by the trade mark will be impaired. The consumer will be confused and misled”37.
Consequently, besides the barrier that absolute grounds represent for the registration of trade mark rights, the determination of risk of confusion is the decisive element in a working trade mark protection system. Owing to that central function of the determination of risk of confusion, the tenth recital of the Preamble to the Trade Marks Directive states that "the likelihood of confusion ... constitutes the specific condition for such protection".38
The term “likelihood of confusion” is found in Articles 4(1)(b) and 5(1)(b) of the Directive, and in Articles 8(1)(b) and 9(1)(b) of the CTMR. Article 4(1)(b) of the Directive and Article 8(1)(b) of the CTMR deal with refusal of registration of a trade
36 CTMR, supra note 1, at Art. 8.
37 Case C-10/89, CNL Sucal v HAG GF, 1990 E.C.R. I-3711.
38 First Directive, supra note 20, at the tenth recital of the preamble: Whereas the protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and goods or services; whereas the protection applies also in case of similarity between the mark and the sign and the goods or services; whereas it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion; whereas the likelihood of confusion, the appreciation of which 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, constitutes the specific condition for such protection; whereas the ways in which likelihood of confusion may be established, and in particular the onus of proof, are a matter for national Procedural rules which are not prejudiced by the Directive
mark by reason of a prior registration. On the other side, Article 5(1)(b) of the Directive and Article 9(1)(b) of the CTMR deal with the exclusive rights of a registered trade mark owner.
A. Assessment of a likelihood of confusion during the registration process
A sign will not be registered as a CTM if, because of its identity with or similarity to an senior trade mark, and the identity or similarity of the goods or services covered by the trade mark, there is a likelihood of confusion on the part of the public in the territory in which the senior trade mark is protected.
Article 4(1)(b) of the Directive regulates the registration of a trade mark and the validity of existing registrations, and provides that a mark shall not be registered, or if registered, shall be liable to be declared invalid if because of its identity with, or similarity to, the senior trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the senior trade mark.
Similarly, the wording of Article 8(1)(b) of the CTMR is essentially the same as Article 4(1)(b) of the Directive. Article 8(1)(b) of the CTMR provides that upon opposition by the owner of a senior trade mark the trade mark applied for shall not be registered if because of its identity with or similarity to the senior trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the senior trade mark is protected; the likelihood of confusion includes the likelihood of association with the senior trade mark.
B. Assessment of a likelihood of confusion during infringement proceedings
to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services as those protected by the CTM.
The grounds on which the non-consensual use by a third party of a trade mark causes an infringement are defined in Article 5(1) of the Directive. Being Article 5(1) substantially identical to Article 4(1), there is infringement under the same conditions as defined in Article 4(1).
Art. 5(1)(b) of the First Directive states that the registered trade mark shall confer on the owner exclusive rights therein. The owner shall be entitled to prevent all third parties not having his consent from using in the course of trade: any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.
That is, the owner of the senior mark is entitled to prevent third parties not having his consent from using in the course of trade any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public.
Article 9(1)(b) of the CTMR, which is substantially identical to Article 8(1)(b) provides that the owner of a CTM is entitled to have all third parties not having his consent from using in the course of trade any sign where, because of its identity with or similarity to the CTM and the identity or similarity of the goods or services covered by the CTM and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.
Title X of the CTMR deals with the litigation system relating to CTMs39. In general terms, it sets out the rules on jurisdiction and procedure governing any legal action involving a CTM. These Courts are obliged to enforce such Regulations and not to apply national provisions which would be in conflict with the Community rule, thus ensuring the supremacy of the Community law.40 The European Court of Justice has the constitutional task of ensuring that in the interpretation and application of the EC Treaty the law is observed. Keystone of the coordination between the national courts and the Court of Justices tasks is the mechanism of preliminary rulings instituted by Article 234 of the EC Treaty.41
The CTM is subject to the principle of Community territoriality and its unitary nature prevents any different treatment of the trade mark in different parts of the European Union.42 The implementation of the law instituted by the CTMR, and in particular the implementation of the rights conferred by a CTM, are entrusted to Courts of the European Community Member States. Since the CTM is a unitary Community-wide right, the CTM system has to provide rules to identify which court in which Member State has jurisdiction to hear each case, as well as the substantive law that will be applied. It is also necessary to have rules ensuring that any decision adopted by a court of a Member State in implementation of the CTMR is recognized and, if necessary, enforced in the other Member States.43 This is achieved by Title X of the CTMR.
Section 2 “Disputes Concerning the Infringement and Validity of Community Trade Marks” of Title X contains an original set of rules specifically governing disputes concerning infringement and validity of CTMs. This is the central and most innovative part of the system, pushing as far as possible the unification of the law regarding
39 CTMR, supra note 1, Title X: Jurisdiction and Procedure in Legal Actions relating to Community Trade Marks.
40 Case C-6/64, Costa v. ENEL, 1964 E.C.R. 585.
41 Now Art.267 of the Treaty on the Functioning of the European Union (TFEU) and formerly Article 177 of the EC Treaty.
42 CTMR, supra note 1, Article 1
43 Mario Franzosi, European Community Trade Mark: Commentary to the European Community Regulations, 371 (Kluwer Law International ed., 1997).
infringement within the European Union.44
A. The Community trade mark Courts: territorial jurisdiction
First, under Article 91(1) of the CTMR, the European Community Member States are required to designate some national courts of first (trial) and second (appeal) instance to act as “Community trade mark Courts” with exclusive jurisdiction for infringement.45 The number of such courts should be as limited as possible.
However, these courts are not “Community Courts”. They are national courts that remain part of the legal system of the Member State in which they are situated, and act as any other national court called upon to implement the Community law when implement the CTMR.
The reason behind Article 91 is the establishment of specialized courts justified by the need to ensure that a right representing such a valuable asset as a CTM is dealt with in specialized courts by judges with special knowledge and experience in trade mark cases. These courts even have jurisdiction, if so requested by the defendant in infringement proceedings by way of a counterclaim, to revoke or to declare invalid the CTM with effect for the whole territory of the European Union. If there were no such designated Community trade mark Courts, there would be a risk that in some cases the actions would be heard by courts lacking the indispensable experience related to CTMs.46
It is important to emphasize that when such national courts are sitting as Community trade mark Courts, they will apply the substantive law of the regulation rather than the national, directive-consistent trade mark law of the state in which they sit. Certain matters are, however, left to national law, such as procedural laws, remedies for infringement other than injunctions, interim measures, and appeals. For example, an appeal goes to the Community trade mark Courts of second instance from judgments of the Community
44 Mario Franzosi, supra note 43, at 372.
45 For a list of CTM Courts, see http://oami.europa.eu/de/office/aspects/tmc/liste_tmc.htm. 46 Mario Franzosi, supra note 43, at 383.
trade mark Courts of first instance in respect of proceeding arising from relevant actions.47 The conditions under which an appeal may be lodged with a Community trade mark court of second instance are determined by the national law of the Member State in which that court is located. National rules concerning further appeal are also applicable in respect of decisions of Community trade mark Courts of second instance.
While most of the Member States only nominated a few courts, Germany and Italy designated a large number of Community trade mark Courts. In Germany this is because of its federal system and the fact that the German States (Länder) have the competence to organize the courts, so of course every State in Germany wanted to have Community trade mark courts of its own. The Courts are supposed to be specialized in CTM law. However, some Member States have several courts and their specialization and knowledge might not always be sufficient. In Germany there are a few courts, for example München, Köln and Düsseldorf, which have the reputation for being more knowledgeable in CTM matters than others.
Second, Article 92 of the CTMR provides that Community trade mark Courts have exclusive jurisdiction for: (a) all infringement actions and all actions in respect of threatened infringement (provided they are permitted under the national law of the court having power) relating to CTMs; (b) actions for a declaration of non-infringement, if such are permitted under national law; (c) actions for reasonable compensation in respect of matters arising between the date of publication of the CTM application and the date of publication of the registration of the said mark; and (d) counterclaims for revocation or for declaration of invalidity of a CTM raised in infringement actions or actions for threatened infringement.48
47 CTMR, supra note 1, Art. 101.
48 CTMR, supra note 1, at Art. 92: The Community trade mark courts shall have exclusive jurisdiction:
(a) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to Community trade marks;
(b) for actions for declaration of non-infringement, if they are permitted under national law; (c) for all actions brought as a result of acts referred to in Article 9 (3), second sentence;
Article 91 must be seen in the light of the unitary set of rules on international jurisdiction contained in Article 93, according to which it can be established in each case in which Member State a court has jurisdiction for dealing with infringement and invalidity proceedings. Article 93 of the CTMR determines the jurisdictions in which the CTM registrant may bring enforcement proceedings:
1. the Member State in which the defendant has his domicile (its registered office in case of a legal person),
2. the Member State where the defendant has an establishment,
3. the Member State where the plaintiff has his domicile (its registered office in case of a legal person),
4. the Member State where the plaintiff has an establishment, 5. the Member State where the OHIM has its seat, i.e. Spain.
It is through these two main instruments that the CTMR governs jurisdiction for the legal actions mentioned above: first, the designation by each EC Member State of a number as limited as possible of so-called “Community trade mark Courts”; second, a set of rules of choice of jurisdiction to the effect that in each case, regardless of whether the parties have their domicile within or beyond the European Union, a competent court can always be clearly identified.49
This thesis will focus exclusively on actions for infringement of a CTM. For infringement actions the plaintiff has in each case the choice between two alternative jurisdictions:
1. a court situated in the Member State where the defendant (the alleged infringer) has his domicile or, if this criterion fails, in a Member State determined by applying some subsidiary criteria, (Article 93(1) to (3)), or
2. a court situated in the Member State where the act of infringement was committed (Article 93(5)).
pursuant to Article 96.
B. The legal effect of the Community trade mark Courts’ judgments
By virtue of Article 94 of the CTMR, the choice between the two alternatives stated in Article 93 has consequences regarding the extent of the jurisdiction of the court having power. That is, the extent of the jurisdiction which will vary according to these two alternatives. A court whose jurisdiction is based on the domicile of the parties has jurisdiction in respect of any act of infringement committed within the European Union, and therefore the jurisdiction of that court extends for relevant matters to the whole of the European Union. In contrast, if a court has jurisdiction based on the place where infringement took place (or threatens to take place), it has jurisdiction only in respect of acts of infringement committed within the territory of the Member State where it is situated.
As for procedural matters in disputes concerning infringement or validity, Article 97(3) provides that each Community trade mark court has to apply the rules of procedure that govern the same type of actions relating to a national trade mark under its national law. In other words, an action for infringement of a CTM will be dealt with by the competent Community trade mark court, from the procedural point of view, as if it were an infringement action of a national trade mark of the Member State where the court is situated. This rule applies to each of the three possible court levels which are usually opened to the parties under national procedural law.
According to Article 101(1) there is a right to appeal against a decision reached by a Community trade mark court of first instance before the competent Community trade mark court of second instance. According to Article 101(3) a further appeal against a decision by a Community trade mark court of second instance can be lodged before the higher national judicial level.
throughout the European Community, the First Directive and the CTMR were adopted. The Directive to approximate the laws of the Member States relating to trade marks was intended to harmonize the disparities in trade mark law that impeded the free movement of goods and the provision of services within the European Union.
The adoption of the CTMR was a further step to achieve this trade mark harmonization. It created a unitary trade mark system, allowing the registration of one CTM that is valid throughout the entire territory of the European Union. The protection of these trade marks requires a finding of a “likelihood of confusion”, which is regulated in Articles 8(1)(b) and 9(1)(b) of the CTMR. The CTMR requires that Member States designate a number of specialized and centralized national courts to act as “Community trade mark Courts” that have exclusive jurisdiction for CTM infringement cases, and also has rule to determine which court in which Member State has jurisdiction to hear a certain case. 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.
Chapter 3 – Elements for the assessment of a likelihood of confusion in
the OHIM and the ECJ
In this chapter, we will analyze the factors developed by the OHIM50 as well as by the ECJ case law in the assessment of a likelihood of confusion between two marks. First, the OHIM principles in determining the existence of a likelihood of confusion are explained. Second, the four cases in which the ECJ developed the criteria for the assessment of a likelihood of confusion will be introduced and summarized.
Section 1 – Likelihood of Confusion in the Board of Appeals of the OHIM
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.
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.53
The 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,
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, in
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.
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.
Section 2 - Likelihood of confusion in the case law of the European Court of Justice
Article 234 of the EC Treaty provides that the Court of Justice has jurisdiction to give preliminary rulings notably in connection with the interpretation of the EC Treaty and the validity and interpretation of acts of the institutions of the European Union in order to ensure that there is a single, uniform interpretation of Community law, and in particular of the rules of Community law with direct effect, by national courts or tribunals. Consequently, any preliminary ruling by the Court of Justice on a question of Community law is binding upon any national court or tribunal in a dispute in connection with the relevant Community law provisions or acts. That is, the ECJ gives guidance as to the interpretation of the Treaty (or Community measures made thereunder) and the national tribunal is to apply such an interpretation to the cases before it.
The European Court of Justice has interpreted the concept of a likelihood of confusion in several occasions in the context of the identical provision of Article 4(1)(b) of the Directive to approximate the laws of the Member States relating to trade marks. The European Court of Justice has stated that its interpretation of Article 4(1)(b) also applies to Article 5(1)(b).57
Furthermore, that both provisions in the Directive as well as in the CTMR have to be interpreted in the same manner has been stressed by the Advocate General58 Francis
57 Case C-425/98, Marca Mode v. Adidas, 2000 E.C.R. I-4861.
58 The Advocate General is a figure whose duty is to “present to the ECJ reasoned submissions on cases to assist the ECJ in the performance” of its duties under the Treaty of Rome. Tessensohn, May
You Live in Interesting Times – European Trademark Law in the Wake of Sabèl BV v. Puma AG, 6
Journal of Intellectual Property Law 217, at 248 n.137 (1999). The Advocate General must “analyze the case in an impartial and independent manner and their submissions ‘are objective and do not represent the views of either party’”. Id. (quoting Penelope Kent, European Community Law 18 (1992).
Jacobs in his opinion delivered in the Sabèl case59: “It is also relevant to note at this point the establishment of the CTM under the CTMR, which, as mentioned above, contains provisions relating to confusion between which are virtually identical to those in the Directive. It is clearly appropriate that the provisions of the Directive should be interpreted in the same way as the corresponding provision of the Regulation”.60
The basic legal requirements for determining a likelihood of confusion under the CTMR are laid down in Article 8(1)(b) and the seventh recital to the CTMR. The seventh recital states that a likelihood of confusion constitutes the specific condition for the protection afforded by the CTM and that the concept of similarity must be interpreted in relation to the likelihood of confusion: “Whereas the protection afforded by a CTM, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and the goods or services; whereas the protection applies also in cases of similarity between the mark and the sign and the goods or services; whereas an interpretation should be given of the concept of similarity in relation to the likelihood of confusion; whereas the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection.” Furthermore, in cases in which only similar trade marks and/or goods/services are at issue, Article 8(1)(b) of the CTMR requires a 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.
The interpretation of Article 4(1)(b) of the Directive came before the European Court of Justice for the first time in Sabèl v. Puma61. The Court has construed the concept
59 Case C-251/95, Sabèl v. Puma, 1997 E.C.R. I-6191. 60 Sabèl, supra note 59, at paragraph 52.
of the likelihood of confusion in three other rulings where it has set out the principles for the assessment of a likelihood of confusion. These four cases which will be discussed in chronological order. Lastly, the Court’s statements have been grouped beneath headings that correspond to the issues arising from these provisions.
A. Sabèl BV v. Puma AG, Rudolf Dassler Sport
The interpretation of Article 4(1)(b) of the Directive came before the European Court of Justice for the first time in Sabèl v. Puma. Puma, a registered owner of a trade mark depicting a bounding/running puma, opposed registration of a mark by Sabèl that consisted of a bounding/running cheetah. The Bundesgerichtshof (Supreme Court of Germany) inquired two issues:
- How should one approach the issue of making a comparison of marks in general terms?
- Was the mere fact that the public might associate goods bearing the respective marks with one another itself a ground of confusion?
In summary, the ruling said: “The appreciation of the likelihood of confusion depends on numerous elements and, 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. The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case.”62
As the average consumer normally perceives a mark as a whole and does not analyze its various details, the global appreciation of the oral, visual and conceptual similarity of the marks in question must be based on the overall impression the marks convey, bearing in mind, in particular, their distinctive and dominant components.63 Simultaneously, account needs to be taken of the fact that the average consumer only
62 Sabèl, supra note 59, at paragraph 22. 63 Sabèl, supra note 59, at paragraph 23.
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.64
Moreover, the more distinctive the senior mark, the greater will be the likelihood of confusion.65 It is not impossible 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, where 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.66 Mere association that the public might make between the two marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion.67
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.
