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Risk of Confusion and Criteria for determining the same in Community Trade Mark Law

European Intellectual Property Review, Vol 24 No 1, January 2002

Gert Wuertenberger

In this article, the author reviews not only the judgments of the Court of Justice of the European Communities but also the decisions of the Opposition Divisions and Boards of Appeal of the Community Trade Mark Office (the "Office for the Harmonisation of the Internal Market"), in the light of European Community legislation on the likelihood of confusion between similar marks. He examines, first, the provisions of the harmonisation Directive and the Community Trade Mark Regulation; second, the four relevant judgments of the Court (Marca Mode v Adidas, Sabel v Puma, Canon Kabushiki Kaisha v MGM and Lloyd Schuhfabrik Mayer v Klijsen Handel); and, third, selected decisions of the Office (Campbell / Campbell Catering, UNLV Rebels / Rebels, Comfort Hotel / Confortel and Dino / Dinokids). He emphasises the relationship between the trade mark and the goods or services to which it relates and points out, in the context of the Campbells case, that "so-called 'accompanying trade marks' may establish similarity of goods and/or services even if the same marks belong to different production/service levels", but only in rather special circumstances. As for the "global appreciation of the likelihood of confusion" - an approach adopted by the Court in the Lloyd Schuhfabrik case, - the author distinguishes the approach from the examination of "the distinctive and dominant components of the trade markes to be compared". In the Rebels case, the consequences of an examination along these lines were decisive. In the Comfort case, on the other hand, the author applauds the decision of the Office's Board of Appeal, which had said that, while there was a certain similarity in the wording, or phonetic effect, of the two marks, this was offset by the accompanying graphic elements, which were substantially different. He is, however, a little more critical of the Opposition Division's denial that there was any risk of confusion between Dino, with its graphic component, and the purely verbal mark Dinokids. He stresses that, under the Directive, a likelihood of confusion must be shown and that a mere association between the marks is insufficient: he quotes with approval the Opinion of the Advocate-General in the Marca Mode caseand adds the view expressed by the Advocate-General that "the national court must find in a positive manner the existence of a likelihood of confusion on the basis of evidence brought forward by the owner of the earlier mark. (This illustrates one of the differences between registration of a Community Trade Mark and infringement proceedings in respect of a national trade mark.) In conclusion, the author says that, while inevitably there exist a number of decisions which result in a narrow assessment of the scope of protection of the opposition marks, "the practice so far established by the Office appears to satisfy the expectations of its 'customers', as the convincingly high number of new applications indicates". [20057]