Trademark Opposition Proceedings in Switzerland: An Empirical Study of Legal Reasoning

This study is the first empirical analysis of legal reasoning in trademark opposition proceedings in Switzerland. We examine a novel dataset on trademark opposition proceedings brought before the Swiss Federal Institute of Intellectual Property (IPI). In these proceedings, the likelihood of confusion between two (or more) trademarks is assessed based on the similarity of the trademark signs and the similarity of the goods and services, taking into account a series of additional aspects such as the distinctive character of the opposing trademark and the level of attention of the average consumer when buying the goods and services for which the earlier trademark is registered. Our dataset contains information on 2,453 cases relating to proceedings between June 2002 and August 2018. In particular, we examine which substantive factors drive the outcome of these decisions. Some of our findings call into question the established legal doctrine. For example, our data suggest that the importance of the beginning of words for establishing similarity between word marks is overrated by legal doctrine. Furthermore, our data show no clear influence of the level of attention on the assessment of the likelihood of confusion. Instead, we found striking differences between the success rates of different types of trademarks. In fact, the data reveal a sliding scale with word marks being the most successful trademarks followed by figurative trademarks that contain a word element, and purely figurative trademarks. Based on our empirical findings, we make suggestions on how to improve the legal reasoning when assessing the likelihood of confusion.

Messi vs. Massi, Prior Right vs. Reputation: The Decision of the Court of Justice of the European Union and Its Assessment with Regard to the Turkish Trademark Law

The Messi case,1 which originated with the decision of the European Union Intellectual Property Office (EUIPO) in 2011 and was finalized in 2020, surprised the IP world/practitioners with the remarks of the first instance court and the Court of Justice of the European Union (CJEU) as their findings were contrary to the established case law regarding the implementation of the relative grounds of refusal. Lionel Messi was a party to the court case as the applicant of the later application for the same classes of goods; the first instance court overruled the appeal of the owner of the earlier trademark based on relative grounds, given Lionel Messi’s reputation as a famous football player and thus the reputation of his surname ‘Messi’, even though the two trademarks were considered visually and phonetically similar. It was reiterated in the court decision that the reputation of the owner of the later trademark application neutralized the likelihood of confusion with the earlier trademark. Moreover, the judgment (dated 17 September 2020) of the Tenth Chamber of the CJEU went beyond the ordinary scope of trademark law. In this study we will discuss, in the context of the Messi decision, the influence of the reputation of a later trademark on conceptual differentiation and the possible results of not adducing evidence proving the reputation of a trademark.

The Fairy Tale of the Average Consumer: Why We Should Not Rely on the Real Consumer When Assessing the Likelihood of Confusion

The present article considers whether the confusion analysis in trademark law is at risk of being used strategically as a self-servicing mechanism by the industry to obtain trademark rights to descriptive, cultural and non-traditional signs. In this context, two features of the trademark system are particularly worrisome. First, trademark owners can strengthen the distinctive character of their marks by investing in marketing and branding campaigns. Second, trademark owners can afford expensive surveys demonstrating the high distinctiveness of their marks and strengthening their position in an infringement case. A study of 189 Dutch cases reveals that in the likelihood-of-confusion assessment, the degree of a mark’s distinctiveness and corresponding empirical findings can have a deep impact. However, the study also shows that descriptive, cultural and non-traditional signs were not often disputed. In practice, the risk of misappropriating these signs might therefore be limited. In some cases, however, trademark owners did succeed in achieving a broad scope of protection regarding descriptive, cultural and non-traditional signs. Therefore, national courts should have more room to make normative corrections in favour of freedom-of-competition interests. This would allow judges to prevent trademark owners from achieving unjustified economic advantages flowing from these signs.

CJEU provides guidance on assessing if an ‘economic link’ exists between two parties which precludes a likelihood of confusion Court of Justice of the European Union, Case C-736/18 P Gugler France v European Union Intellectual Property Office, EU:C:2020:308, 23 April 2020

The Court of Justice of the European Union has confirmed that the assessment of whether there was an ‘economic link’ between two parties should be assessed substantively and not formally. As such, it should not be only considered from the perspective of whether the earlier rightholder has the ability to control the other party.

The Forensic Analysis of Likelihood of Confusion among Brand Names: Case of Adidas and Abidas

This paper demonstrates how an expert in Forensic Linguistics, using his skills and abilities to come up with a legal decision-making based on scientific evidence in cases involving brand names under dispute. The very important aspect in the likelihood of confusion between two brand names is when two products have names which could make consumers a bit confused while the composition of both products has one or two different ingredients which could have some allergic reactions in the body of some consumers referring to sectors like the food industry, pharmaceutical sector and so on. The study states that the conflict on the trademarks Adidas and Abidas could be avoided if the linguists are called upon as experts while the junior brand looks for name about his new brand or in the courts for the legal decision-making between brands. For these reasons, the discussion tries to provide answers to the following research questions: (a) Can a forensic linguist provide relevant evidence in the conflicts between brand names? (b) What are aspects to take into consideration? (c) Is it possible to determine the likelihood of confusion between Adidas and Abidas? To answer these research questions, an authentic case was thoroughly examined. This involved revisiting the Community Trademark conflict between the earlier and international brand Adidas and Abidas. For purposes of analysis, the likelihood of confusion was taken into consideration in the review of the Adidas vs Abidas case.

Christie’s Trade Mark Application

H1 Trade marks – Opposition proceedings – ZOHARA – Likelihood of confusion – Identifying the average consumer – Assessing aural similarity – Differences in pronunciation – Global assessment – Appeal to Appointed Person

Likelihood of Confusion of Essential Parts of a Complex Trade Mark

Saboo v sobia; with Case note by Il Ho Lee

GLAXO WELLCOME UK LTD v SANDOZ LTD1

H1 Passing off – Prescription medication – Asthma inhalers – The colour purple – Distinctiveness – Misrepresentation as to source – Misrepresentation as to equivalence – Likelihood of confusion – Survey evidence – Damage – Recklessness – Joint tortfeasance