THE CONCEPT OF CONFUSION AND DEVELOPMENTS IN TRADE MARK OPPOSITION DECISIONS OF THE CFI AND ECJ

DEVELOPMENTS IN TRADE MARK OPPOSITIONS INTRODUCTION Statistics Likelihood of confusion (‘L of C’) – derivation Assessment of L of C CFI’s approach to assessment

DEVELOPMENTS IN TRADE MARK OPPOSITIONS NUMBER OF CTM APPLICATIONS FILED TO 30 SEPTEMBER 2006 ©2006 OHIM

DEVELOPMENTS IN TRADE MARK OPPOSITIONS OPPOSITIONS RECEIVED TO 30 SEPTEMBER 2006 ©2006 OHIM

DEVELOPMENTS IN TRADE MARK OPPOSITIONS STATISTICS ©2006 OHIM

DEVELOPMENTS IN TRADE MARK OPPOSITIONS LIKELIHOOD OF CONFUSION Derivation                                                                                                                                                                                                                                                             

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Article 4(1)(b) Harmonization Directive 89/104/EEC (1) A trade mark shall not be registered or, if registered, shall be liable to be declared invalid [……….] (b) If because of its identity with, or similarity to, the earlier 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, which includes the likelihood of association with the earlier trade mark.

DEVELOPMENTS IN TRADE MARK OPPOSITIONS 10th Recital Harmonization Directive 89/104/EEC “…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 the goods or services identified…..”

DEVELOPMENTS IN TRADE MARK OPPOSITIONS In assessing similarity, heavy reliance is placed on the following three decisions of the ECJ:- Sabel BV v Puma AG, Rudolf Dassler Sport (Case C-251/95) (“Sabel”) 11 November 1997 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97) (“Canon”) 29 September 1998 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Hendel BV (Case C-342/97) (“Lloyd”) 22 June 1999

DEVELOPMENTS IN TRADE MARK OPPOSITIONS The Elements Global assessment of all the factors Distinctiveness of the earlier mark (inherent distinctiveness/ distinctiveness through use) Degree of similarity between the signs and the goods and services Impact of the kind of goods and services on the assessment The degree of sophistication and attention of the relevant public Coexistence of the conflicting marks on the market in the same territory Incidences of actual confusion Prior decisions by Community or national authorities involving conflicts between the same (or similar) marks No confusion between the signs themselves but confusion about the origin (indirect confusion)

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Similarity of Signs “Signs are similar if under the assumption that the goods are identical and the earlier sign has a normal or high degree of distinctiveness, there would be a likelihood of confusion in the sense that the relevant public might believe that the goods carrying the younger mark and the goods carrying the earlier mark come from the same or economically-linked undertakings.” Draft OHIM Opposition Guidelines Part 2, Chapter 2C – Status: July 2006.

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Similarity of Signs (Continued) Is necessary for a finding of a L of C Must be evaluated in view of the L of C, i.e. whether the conflicting marks are capable of suggesting that the goods or services have their origin in the same or economically linked undertakings The signs should be compared in the form that they enjoy protection Must be carried out in relation to the respective territory where the earlier mark is protected because of differences in meaning and pronunciation The 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 The average consumer normally perceives a mark as a whole and does not proceed to analyse it various details

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Two basic principles The assessment of similarity of signs must not only be based on some isolated elements, but on the global appreciation of both signs under comparison; The distinctive and dominant components are, in particular, important for the evaluation of similarity between the signs

DEVELOPMENTS IN TRADE MARK OPPOSITIONS The Notions of ‘distinctive’ and ‘dominant’ “Signs, unless they are unitary, (single word, single feature, single colour) are perceived in normal life by focussing on the dominant element, that which distinguishes the sign. At a next level of analysis, beyond the mere visual perception, judgment is involved, and it is here that distinctiveness obtains its additional value as a tool; signs or elements of signs which have no distinctiveness in the legal sense, i.e. are descriptive, generic, or for other reasons non-distinctive for the goods or services involved, will largely be totally disregarded when determining similarity in the legal sense, however much they may, as a matter of mere perception, dominate the sign. The perception of what is dominant or distinctive will also vary depending on whether the analysis centres on visual, aural or conceptual similarities.”

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (Case C-120/04) ECJ Ruling within context of infringement proceedings (Art5(1)(b) Directive) The mere dominance or lack of it, of a shared component is not the key to whether a likelihood of confusion exists, where a later composite mark includes an earlier mark for identical goods. There may still be a L of C where the shared element is not dominant in the later mark, but nonetheless has an “independent distinctive role” in it Marks must, it affirmed, be considered as a whole The dismissal of “dominance” as the key issue. THOMSON LIFE LIFE

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Similarity of Goods and Services Is a necessary condition of L of C Must be assessed without taking into account the degree of similarity of the conflicting signs or the distinctiveness of the earlier mark(s). [Canon] the L of C presupposes that the signs as well as the goods and services covered are identical or similar, and the reputation of a mark is a factor which must be taken into account when determining whether the similarity between the signs or between the goods and services is sufficient to give rise to a L of C

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Similarity of Goods and Services (Continued) An absolute borderline must be drawn The goods and services are similar if, supposing identical marks, the public could believe that they come from the same or economically linked undertakings All the relevant factors relating to those goods themselves should be taken into account [Canon factors]: Nature, purpose, method of use, complementary goods/services, competitive/interchangeable goods/services [Further factors]: Channels of distribution, the relevant public, the usual origin of the goods/services

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Inex SA v OHIM; Robert Wiseman & Sons Ltd (Case T-153/03) (CFI) 13 June 2006 Significant visual differences. Cowhide constituted an essential element albeit with weak distinctive character. Use by one party in Benelux was not capable of conferring a particularly distinctive character Marks conceptually similar. Did not outweigh significant visual differences and the weak distinctive nature of the design when considering the overall L of C. Milk and dairy products

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Saiwa SpA v OHIM; Barilla Alimentare SpA (Case T-344/03) (CFI) 5 April 2006 Earlier marks (IT) covering identical goods (pasta) ‘Oro’ has weak distinctiveness in Italy describing goods of superior quality. No evidence of significant use by Opponent. CFI held that the dominant element of the Opponent’s mark was SAIWA. Aural and visual differences between the marks. Presence of the word ‘Oro’ was insufficient for a finding of similarity. Conceptually, the meaning of the word ‘oro’ was secondary and insufficient to offset the aural and visual differences. The distinctive element of the Applicant’s mark was BARILLA. No L of C ORO ORO SAIWA

DEVELOPMENTS IN TRADE MARK OPPOSITIONS ZIRH Mühlens GmbH & Co. KG v OHIM; Zirh International Corp (Case T-355/02) (CFI) and (Case C-206/04) (ECJ) 23 March 2006 Soaps, perfume, cosmetics, hairdressing and beauty services Marks phonetically similar. Visually and conceptually dissimilar. Conceivable that phonetic similarity alone could create a likelihood of confusion (Lloyd Schuhfabrik Meyer) Existence of such a likelihood must be established as part of a global assessment and it was but one of the factors to be considered. Conceptual differences could counteract aural similarities provided that one of the signs has a clear meaning to the relevant public (Ruiz-Picasso) AG’s opinion 10/11/05 – unfortunate that a national court had given a decision in conflict with the CFI                                                    

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Royal County of Berkshire Polo Club Ltd v OHIM; The Polo/Lauren Co. LP (Case T-214/04) (CFI) 21 February 2006 L of C in respect of all goods applied for (BOA had allowed application for ‘bleaching preparations and other substances for laundry use, and polishing, scouring and abrasive preparations). Figurative element of the mark was dominant. Gave the mark its distinctiveness and would be easily remembered by consumers. The sport of polo had no connection with the goods in Class 3 and was therefore highly distinctive. Soaps had a dual function as housekeeping products as well as for beauty and personal hygiene. Followed that there was similarity between soap and bleaching preparations etc.

DEVELOPMENTS IN TRADE MARK OPPOSITIONS QUICKIES Société des Produits Nestlé v OHIM; Quick Restaurants SA (Case T-74/04) (CFI) 22 February 2006 Earlier FR & BX mark for QUICKIES covering Cls 29, 30 & 43. Later Mark for Cls 29, 30 & 32. Visual, phonetic and conceptual similarity. French or Benelux consumer would not perceive the picture as the dominant element. Easier to say the word. Size of word corresponded to size of picture. Food industry relied upon display of happy and animated animals to capture a young audience. Rabbit might be perceived as decorative only. Letter “s” very rarely pronounced in French when placed at end of word A consumer with a little knowledge of English would make a connection. Both evoked the idea of rapidity. QUICKY

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Fernando Rodrigues Carvalhais v OHIM; Profilpas Snc (Case T-206/04) (CFI) 1 February 2006 Identical goods – Metal profiles, synthetic profiles, building materials (Cls 6, 17 and 19) The CFI held that it was possible to conclude that there was a risk of confusion merely on the basis of phonetic similarity (Lloyd Schuhfabrik) Irrelevant that the BOA had previously allowed reg’n of CTM’s in respect of identical goods for marks containing the suffix –FIX, some of which pre-dated this application.

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Castellblanch SA v OHIM; Champagne Louis Roederer SA (Case T-29/04) (CFI) 8 December 2005 Earlier mark protected in FR, DE, GB, IE and AT, BX, IT and PT under International Reg’n in respect of ‘wines originating from France, namely champagne, sparkling wines and alcoholic beverages’ Applicant argued co-existence – CFI dismissed as it was not shown that this resulted from an absence of a likelihood of confusion and a number of disputes between the parties indicated it was not peaceful Reputation: The opponent’s 1999 survey showed reputation only in relation to professional consumers and not the average consumer High degree of similarity between the signs and goods, there was a likelihood of confusion CRISTAL

DEVELOPMENTS IN TRADE MARK OPPOSITIONS RB Square Holdings Spain SL v OHIM; Unelko NV (Case T-384/04) (CFI) 15 December 2005 Earlier ES mark. No risk that the average Spanish consumer would believe the marks derived from the same enterprise. The marks were visually dissimilar (Clean X and CLEN). Phonetically the words differed when pronounced in Spanish CFI concluded that the marks did not share a common dominant element and there was therefore no risk of confusion. Cleaning compositions Bleaching preparations

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Sadas SA v OHIM; LT J Diffusion SA (Case T-346/04) CFI held that the word ARTHUR was the dominant element of the earlier mark. The addition of the words ET and FELICIE did not counter the similarity created by use of the word ARTHUR. NB: Applicant did not dispute the reputation of the earlier mark. Common in clothing sector for a mark to be configured in various ways. Public might believe that ARTHUR ET FELICIE formed part of a new range of products marketed by the owner of the ARTHUR mark. ARTHUR ET FELICIE

DEVELOPMENTS IN TRADE MARK OPPOSITIONS GFK AG v OHIM;BUS –Betreungs und Unternehmensberatungs GmbH (Case T-135/04) (CFI) 24/11/05 ONLINE BUS (Cl.35 - drawing up statistics in the fields of economics, marketing) BUS & Device (Cl.35 Business consultancy). Use of different mark from form registered. The word BUS constituted the dominant verbal element in each of the two signs. This was the memorable element of each mark. Visual difference not likely to preclude a L of C. ONLINE BUS

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Ruiz-Picasso & Others vs. OHIM; DaimlerChrysler AG [2006] Case C-361/04 P (ECJ) (“Picasso”) CFI looked at three factors in assessing the L of C The similarity of the marks The distinctive character of the earlier mark; and The average consumer’s level of attention The ECJ upheld all of the CFI’s findings.              Ceci n’est pas une Picaro

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Picasso/Picaro (continued) The ECJ: Reiterated the need for a global appreciation of the trade marks in question when assessing whether there is a L of C between them Endorsed the CFI’s finding that “where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences observed between those signs may counteract visual and phonetic similarities between them”. (para 20) Were unable [as a matter of law] to review the CFI’s factual assessment which resulted in them holding that the PICASSO sign was “devoid of any highly distinctive character per se with respect to motor vehicles”. (para 32)

DEVELOPMENTS IN TRADE MARK OPPOSITIONS It is worth noting [and which was not drawn out in this case]:- The beginning of a word sign bears a particular importance in the assessment of the visual as well as the aural comparison. The OHIM and the CFI regularly state that the consumer normally attaches more importance to the first part of words. El Corte Inglès Case T-183/02 (CFI of 17/03/2004) at para 81 “the attention of the average and normally attentive consumer would firstly and essentially be caught by the initial element” L’Oréal Case T-112/03 (CFI of 16/03/2005) at para 70 “as concerns phonetic comparison …. The beginning of a sign plays an essential part in that regard”.

DEVELOPMENTS IN TRADE MARK OPPOSITIONS Les Editions Albert René v OHIM (Case T-336/03) (CFI) 27/10/05 Applied the CFI’s earlier decision in Picasso Marks: OBELIX vs MOBILIX Products: ‘Data processing apparatus and telephony’ The CFI underlined that conceptual differences can in certain circumstances counteract the visual and aural similarities between the signs concerned MOBILIX OBELIX

DEVELOPMENTS IN TRADE MARK OPPOSITIONS CONCLUSIONS A likelihood of confusion is dependent on numerous elements (10th Recital) Sabel, Canon and Lloyd One size does not fit all – there is no formula - Picasso (formulaic?) CFI’s adoption of a dominant component approach paired back by Medion v Thomson Move away from dominance and back to global assessment A new chapter: “independent distinctive role”?