Reading list: The Confusion Test in European Trade Mark Law

Ilanah Fhima & Dev S. Gangjee, The Confusion Test in European Trade Mark Law (2019)

A very helpful overview. From a US perspective, offers real insights into how a system of registration primacy differs from a system of use primacy. A couple of points that I specifically noted: the authors conclude, based on “a substantial number of cases,” that courts that consider similarity of marks first are more likely to find confusion. “This is because once the tribunal has invested the effort in conducting the highly case-specific comparison of the marks and found them to be similar, it is less likely to dismiss confusion based on the comparatively formalistic comparison of goods. On the other hand, if goods are considered first, it is easier to place more reliance on this element of the test without having one’s perception clouded by the work done to compare the marks.” I’m not sure one could say the same about US cases.

It’s also striking how comparatively little distinctiveness of the mark, or of shared elements of the parties’ marks, matters in the European analysis versus US analysis, which is more likely to give a narrower scope to a weaker mark. (Both approaches give broader scope to especially strong marks, but European cases seem less willing to do the inverse.) That may be something that relates to use-based versus registration-based approaches. As the authors report, an analysis of European General Court decisions found “that the distinctiveness of the senior mark had very little if any bearing on the outcome of cases” and “visual similarity of marks played the greatest role in assessing similarity of marks.” (As they note later, visual similarity may loom larger in Europe because of language differences—for those who don’t understand the meaning of a word in another language, conceptual similarity doesn’t really matter.)

Unlike US cases, in Europe, distinctiveness (or relative lack thereof) “cannot override the importance of similarity of marks and of goods,” and the court often rests on similarity of marks and goods only, wihtout reaching any result on “what the mark’s level of distinctiveness actually was.” Language differences also inform this result: even where the majority of EU languages would consider a common element to be descriptive, if some might not, the doctrine indicates that people who used those languages would perceive greater similarity and therefore face a greater likelihood of confusion. As the authors conclude, “[t]he undesirable consequence of this approach to global appreciation is to grant a broad legal monopoly to ‘weak’ marks.” The CJEU shows the greatest favoritism to weak marks, whereas the EUIPO, national registries, and national courts “are more sceptical and seek to narrow the scope of protection for such marks.”

Also, some useful statistics: As of mid-2018, “shapes or three-dimensional marks constituted 0.55% (10,279) of EUTM applications and 0.41% (6,231) of registrations, while pure colours constituted 0.01% (104) of EUTM applications and 0.01% (95) of registrations.” And I appreciated the point that “the most revealing indicator of the commercial significance of colour and external packaging marks is the extent to which the tobacco industry has sought to preserve them” in its pitched battle against plain packaging requirements.