European Trademark Law Opposition infringement

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European Trademark LawOpposition infringement

• Alexander Tsoutsanis
• Visiting Professor from Leiden University
• Class 6 - Jan. 29th 2009

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topics

• Comparing signs

• Comparing products

• Class Discussion

• Likelihood of confusion

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Signs - approach

• Identify
• Type
• Territory
• Level of ?istinctiveness
• dominant and distinctive elements
• Reputation?
• Compare
• during opposition as registered
• during infringement as registered by plaintiff
  as used by defendant
• from overall impression of average consumer

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Comparing signs

• Identical?
• Perspective
• Visual
• Approach strict
• Outcome absolute
• identical yes or no

• Similar?
• Perspective
• Visual
• Phonetical
• Conceptual
• Approach balanced
• Outcome relative
• certain degree of similarity
• high-average-low

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Identity

• Arthur Félicie (2003)
• a sign is identical with the trade mark
  where it reproduces, without any modification or
  addition, all the elements constituting the trade
  mark or where, viewed as a whole, it contains
  differences so insignificant that they may go
  unnoticed by an average consumer.

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• OHIM Opposition Guidelines (2007)
• On the other hand, differences so insignificant
  that they may go unnoticed are indeed to be set
  aside when judging identity. What is not noticed
  cannot influence the finding of identity.
  However, in applying this principle, the notion
  of insignificant differences must be
  interpreted narrowly so as not to blur the
  difference between identity and similarity.

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approach OHIM

• Word marks
• Marks are identical if they are both word marks
  and if they coincide exactly in the string of
  letters or numbers.
• A difference in just one letter is enough for
  the finding of non-identity.
• OHIM Opposition Guidelines (2007)

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• Figurative marks
• Since partial identity is not accepted, any
  additional element, however trivial or secondary,
  is sufficient to conclude that the marks are not
  identical it is immaterial whether the added
  element is a word, a device or a combination of
  the two.
• OHIM Opposition Guidelines (2007)

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Similarity

• Puma/Sabel (1997)
• That 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.

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key aspects

• Assessing (counter)balancing all 3 angles.
• Not necessary to establish similarity in all 3.
• 1 type of similarity may be sufficient to
  establish (or prevent) LoC (Puma/Sabel
  Canon/Cannon).
• Conceptual similarity not relevant, if the word
  mark does not have a meaning.

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Composite marks (Shaker v. OHIM)

• When examining whether there is a likelihood of
  confusion, (), assessment of the similarity
  between two marks means more than taking just one
  component of a composite trade mark and comparing
  it with another mark. On the contrary, the
  comparison must be made by examining each of the
  marks in question as a whole, which does not mean
  that the overall impression conveyed to the
  relevant public by a composite trade mark may
  not, in certain circumstances, be dominated by
  one or more of its components. In that regard, it
  is only if all the other components of the mark
  are negligible that the assessment of the
  similarity can be carried out solely on the basis
  of the dominant element.

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LIMONCHELO
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Comparing products

• Identify
• Relevant marketplace for products
• Compare
• from a commercial perspective (not purely
  technical!)
• all relevant factors.

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factors

• Nature
• Purpose
• Method of use
• Complementary
• Competitive

• Distribution channels
• Relevant public
• Usual origin
• Composition
• Marketing
• Trends in industry

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examples

• Beer (32) v. Wine (33) ?
• Coffee (30) v. Energydrink (32)?
• Cellphone v. computers (9)?
• Cellphone (9) v. telecommunication services (38)?
• Footwear v. clothing (25)?

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Likelihood of confusion

• Direct v. indirect confusion
• Relevant factors see 7th recital in preamble of
  CTMR.
• Interdependence between factors (Canon v.
  Cannon).
• Likelihood of confusion in part of Community is
  sufficient.

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Adidas v. Marca (EU 2008)

• Irrelevant factors
• Alleged requirement of availability or
• Alleged perception as decoration
• Reinstated as relevant factor
• Likelihood of association the ease with which
  the sign may be associated with the mark, having
  regard, in particular to the recognition of the
  latter on the market

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Adidas v. Payless (US 2008)
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