Part II. Article 8(1) EUTMR: Concept of likelihood of confusion
The notion of ‘likelihood of confusion’ fulfils a very significant role in the Community trademark System. According to Article 8(1)(b) EUTMR, in contrast to situations of double identity as seen in Part I, in cases of mere similarity between the signs and the goods or services, or identity of only one of these factors, an earlier trademark shall oppose the registration of a trademark under 8(1)(b), but only if there is a likelihood of confusion.
According to settled case-law, this concept refers mainly to two situations:
- when the public directly confuses both trademarks (mistakes one for the other);
- when the public makes a connection between both conflicting trademarks and assumes that the goods or services are from the same or economically linked undertakings. This is known as likelihood of association and it is included in the concept of likelihood of confusion.
As a general ideal, a trademark will be considered confusingly similar to a prior trademark if, when used for similar goods or services, so closely resembles the prior mark that there is a likelihood of consumers being misled as to the nature or origin of the goods or services. The distinguishing role of the trademark will not be functioning if the consumer is confused between the trademarks.
The ECJ considered comprehensively this notion in Sabel v Puma.
First of all, the existence of a likelihood of confusion must be appreciated globally with regard to the way in in which the relevant public perceives the trademarks and goods or services, and always taking into account all factors relevant to the circumstances of the case, specially the interdependence of the degree of similarity of the trademarks and the similarity of the goods and services. A global appreciation is necessary, since an average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
Generally speaking, two items are defines as similar when they have some characteristics in common. This is why the Court has also identified the factors for determining whether goods/services and signs are similar. In this regard, the ECJ, in a famous case known as Canon, concluded that the following factors should be taken into account to determine whether good/services are similar:
- Nature, which can be defined as the essential qualities or characteristics by which this product/service is recognised (e.g. yoghurt is a milk product and car is a vehicle). The fact that goods and services to be compared fall under the same class heading does not automatically mean that they have the same nature,
- Intended purpose, is generally defined as the reason for which something is done or created or for which something exists (e.g. a plastic bag can be used as protection against the rain, but its intended purpose is to carry items).
- Method of use, which determines the way in which the goods and services are used to achieve their purpose (e.g. newspapers and books are both read).
- Complementarity, occurs when there is a close connection between goods/services, in the sense that one is indispensable or important for the use of the other (e.g. for example wine and wineglasses or skis and ski boots).
- In competition, happens when goods/services can substitute the other, so they both serve the same or similar purpose and are offered to the same customers (e.g. electric shavers and razor blades serve the same purpose)
On the other hand, in Sabel vs Puma, the ECJ also states that similarity between trademarks can be aural, visual and conceptual, since trademarks generally consist of words which are read, spoken and understood, or logos, containers or packaging which are seen and understood:
- Visual similarity. Is often considered as the mail criteria or similarity, since trademarks are usually graphic representations and customer’s attention is mainly caught my means of visual perceptions. It includes, in addition to any textual content, colour, shape, size, position.
- Aural similarity. Refers to word marks which, when spoken, sound similar.
- Conceptual. Mainly refers to cases when two trademarks convey to the same concept. For example, the world “dog” and a picture of a dog are conceptually similar.
European Union Trademark Regulation http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1456313698327&uri=CELEX:02009R0207-20130701 and Amending Regulation http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1456313648273&uri=CELEX:32015R2424
Guidelines for examination of European Union Trademarks https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_LR_2016/Part-C/02-part_c_opposition_section_2/part_c_opposition_section_2_chapter_4_comparison_of_signs/TC/part_c_opposition_section_2_chapter_4_comparison_of_signs_tc_en.pdf