Likelihood of confusion in the judgements of the European Courts and in the decisions of the OHIM
(2005)Department of Law
- Abstract
- According to the ECJ, the assessment of the likelihood of confusion between two trade marks requires a consideration of numerous elements and, in particular: the degree of similarity between the trade marks and between the goods or services identified&semic the recognition of the trade mark on the market&semic the association which can be made with the used or registered sign. Moreover, it is important to underline the fact that there is an interrelation between the similarity of the marks and the similarity of the goods. A lesser degree of similarity between the goods may be counterbalanced by a higher level of similarity between the marks, and vice versa, and therefore may still cause risk of confusion. As the average consumer normally... (More)
- According to the ECJ, the assessment of the likelihood of confusion between two trade marks requires a consideration of numerous elements and, in particular: the degree of similarity between the trade marks and between the goods or services identified&semic the recognition of the trade mark on the market&semic the association which can be made with the used or registered sign. Moreover, it is important to underline the fact that there is an interrelation between the similarity of the marks and the similarity of the goods. A lesser degree of similarity between the goods may be counterbalanced by a higher level of similarity between the marks, and vice versa, and therefore may still cause risk of confusion. As the average consumer normally perceives a mark as a whole and does not analyse 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. Account needs also to be taken of the fact that the average consumer only 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. Therefore, the likelihood of confusion must be appreciated globally, and all the elements relevant to the facts and the circumstances of the case have to be taken into consideration. The distinctiveness of the earlier mark plays a crucial role in evaluating whether or not there is risk of confusion: the more distinctive, the greater the probability that the mark at issue will be confused. The distinctive feature of a mark is due either to its intrinsic characteristic or to the reputation it has achieved in the market through use. Marks with a highly distinctive character enjoy a broader protection than marks which are devoid of it. Accordingly, even though the goods/services at issue have a lesser degree of similarity, there may still be likelihood of confusion if the earlier mark is highly distinctive, especially when it has a reputation. For the assessment of the risk of confusion it has also to be taken into account the kinds of goods involved, since the average consumer's level of attention is likely to vary according to the category of goods or services in question. In doing so it has to be made reference to the consumer prototype which, according to the ECJ's case law on deceptive advertising now equally used in trade mark matters, is a reasonably well informed and reasonably observant and circumspect consumer. Finally, according to Article 8(5) of the Community Trade Mark Regulation, there is a case in which no similarity of goods and/or services is required&semic this provision provides a broader protection for trade marks which have a reputation, since their owner has the possibility to oppose the registration of a similar trade mark also in cases in which no similarity of goods and/or services can be established. (Less)
Please use this url to cite or link to this publication:
http://lup.lub.lu.se/student-papers/record/1554947
- author
- Pacini, Paolo
- supervisor
- organization
- year
- 2005
- type
- H1 - Master's Degree (One Year)
- subject
- keywords
- European Affairs
- language
- English
- id
- 1554947
- date added to LUP
- 2010-03-08 15:22:46
- date last changed
- 2010-03-08 15:22:46
@misc{1554947,
abstract = {{According to the ECJ, the assessment of the likelihood of confusion between two trade marks requires a consideration of numerous elements and, in particular: the degree of similarity between the trade marks and between the goods or services identified&semic the recognition of the trade mark on the market&semic the association which can be made with the used or registered sign. Moreover, it is important to underline the fact that there is an interrelation between the similarity of the marks and the similarity of the goods. A lesser degree of similarity between the goods may be counterbalanced by a higher level of similarity between the marks, and vice versa, and therefore may still cause risk of confusion. As the average consumer normally perceives a mark as a whole and does not analyse 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. Account needs also to be taken of the fact that the average consumer only 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. Therefore, the likelihood of confusion must be appreciated globally, and all the elements relevant to the facts and the circumstances of the case have to be taken into consideration. The distinctiveness of the earlier mark plays a crucial role in evaluating whether or not there is risk of confusion: the more distinctive, the greater the probability that the mark at issue will be confused. The distinctive feature of a mark is due either to its intrinsic characteristic or to the reputation it has achieved in the market through use. Marks with a highly distinctive character enjoy a broader protection than marks which are devoid of it. Accordingly, even though the goods/services at issue have a lesser degree of similarity, there may still be likelihood of confusion if the earlier mark is highly distinctive, especially when it has a reputation. For the assessment of the risk of confusion it has also to be taken into account the kinds of goods involved, since the average consumer's level of attention is likely to vary according to the category of goods or services in question. In doing so it has to be made reference to the consumer prototype which, according to the ECJ's case law on deceptive advertising now equally used in trade mark matters, is a reasonably well informed and reasonably observant and circumspect consumer. Finally, according to Article 8(5) of the Community Trade Mark Regulation, there is a case in which no similarity of goods and/or services is required&semic this provision provides a broader protection for trade marks which have a reputation, since their owner has the possibility to oppose the registration of a similar trade mark also in cases in which no similarity of goods and/or services can be established.}},
author = {{Pacini, Paolo}},
language = {{eng}},
note = {{Student Paper}},
title = {{Likelihood of confusion in the judgements of the European Courts and in the decisions of the OHIM}},
year = {{2005}},
}