眾律國際法律事務所

Part I. Article 8(1) EUTMR: Double identity and concept of identity.  

Article 8 of the European Union Trademark Regulation states the different grounds on which an opposition may be based. In other words, it enables the proprietor of an earlier trademark to oppose the registration of a later trademark application in a different range of situations. We will only concentrate on article 8(1), which states two different situations:

1. Upon opposition by the proprietor of an earlier trademark, the trademark applied for shall not be registered:

(a) if it is identical with the earlier trademark and the goods or services for which registration is applied for are identical with goods or services for which the earlier trademark is protected;

(b) if because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.

This way, (a) provides for oppositions based on exact identity, while (b), in contrast, is based on cases of mere similarity between the signs and goods/services, or also identity, but only if there is a likelihood of confusion.

The opposition can only be based on (a) when there is identity between both (i) the mark or sign concerned and (ii) the goods/services under consideration. This situation is known as “double identity”. In this case, the owner of the earlier trademark shall oppose the applied trademark and a legal finding shall start, making a direct comparison of the two conflicting signs and goods/services in question. Where there is double identity, there is no need to carry out an evaluation to se if there is or not a likelihood of confusion, since it is presumed and there is no need for the opponent to demonstrate it in order to prevail. 

According to judgment of 20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, an EUTM application shall be considered identical when ‘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’. Therefore, the definition of identity implies that both signs should be the same in all respects, taken as a whole (partial identity is not sufficient) and in all levels of comparison (visual, phonetic or conceptual).

According to EU Case Law, the following marks are considered identical:

The following marks are not identical:

Reference:

Case Law can be found writing the case number in: https://euipo.europa.eu/eSearchCLW/

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