Assessing Likelihood of Confusion

The likelihood of confusion test is inextricably linked to the principal justification for trade mark protection. If the essential function of a trade mark is to reliably indicate the commercial origin of a product in the marketplace, an action to prevent confusion amongst consumers, thereby impeding this origin indicating ability, is a necessary corollary. The language of Article 5(1)(b) (relative grounds) and Article 10(2)(b) (infringement) of the Trade Marks Directive 2015 (TMD 2015) indicates that the proprietor has the right to prevent a junior user from registering or using a mark where ‘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; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

Similarity of Goods and Services

An action lies for likelihood of confusion where the parties’ goods are either identical or similar. Generally, it is relatively straightforward to ascertain whether goods or services are identical, and even if it is not, there is always the fallback of arguing that the goods are similar. Therefore, this chapter concentrates on how similarity of goods can be demonstrated. Although the assessment of similarity of goods is arguably more straightforward than that for similarity of marks, it nevertheless involves an assessment and balancing of a number of factors which may suggest contradictory outcomes. Unlike similarity of marks, not every factor is considered in every case, and in many cases just a couple of the factors are considered, adding a degree of unpredictability to the test. A potential added complication is that, in line with the global appreciation approach to assessing likelihood of confusion, the degree of similarity of goods required in any one case should depend on the level of similarity of marks and the distinctiveness of the senior marks.

Similarity of Marks

The test for similarity of marks has changed very little since it was laid down by the Court of Justice of the European Union (CJEU) in SABEL v Puma. Given that the court has adopted a strict approach to when marks will be identical, similarity of marks plays a crucial role in ensuring that the interests of trade mark owners are adequately protected. There the court stated that a ‘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’ with a view to determining whether the signs in question are similar enough to lead to a likelihood of confusion in the minds of the average consumer of the goods or services in question. It has subsequently been suggested that, where marks have other sensory aspects, as would be the case with, for example, an olfactory mark, these too should be considered. The court also noted that average consumers tend to view marks as a whole, rather than dividing them into their constituent elements.

Composite Marks

The logical starting point for any discussion of composite marks should be to define what composite marks are. Unfortunately, there is no clear agreement on their meaning in the jurisprudence or scholarship. The archetypical example of a composite mark is sometimes thought to include a word element and a figurative element, and indeed such marks can pose particular problems because, if one element points towards similarity while the other points away from it, it is particularly difficult to analyse how these quite different phenomena will interact. However, the meaning of composite marks seems to be considerably wider than this example, and certainly includes marks which consist of just words. Prominent examples include THOMSON LIFE and BIMBO DOUGHNUTS. These examples include a company name and a subsidiary mark or type of product, but in other cases the elements of the mark are less discrete. For example, the name BARBARA BECKER was treated as a composite mark, and outside the context of confusion, HAVE A BREAK, HAVE A KIT KAT was also labelled as a composite mark.

Introduction: The Likelihood of Confusion

Confusion is the lynchpin of trade mark law. As a cause of action, it has something to offer everyone: trade mark owners are protected from those trying to reap the benefits of their investment in their mark and brand, the public interest is served because consumers are protected from making mistaken purchasing decisions, and consequently, a differentiated market for goods and services can operate. The prevention of confusion also has intuitive appeal. We have all been confused; policymakers, judges, academics, practitioners, and members of the public alike. Indeed, we have probably all made erroneous decisions in the marketplace. Yet, despite (or perhaps because of) the ease with which likely confusion provides the traditional rationale for trade mark protection, it is under-analysed and under-studied. In particular, it is our belief that the very intuitiveness of confusion has resulted in little systematic analysis considering the exact ingredients that make up a claim of confusion.

Distinctiveness of the Marks

The role of distinctiveness is perhaps the least understood element of the likelihood of confusion analysis. Obscure in its origins, the idea that the more distinctive a mark is, the more likely confusion should be has been repeatedly accepted by the Court of Justice of the European Union (CJEU), but this is also strongly criticised by commentators and UK judges in particular. This chapter seeks to understand the role that distinctiveness plays in the assessment of confusion, explaining how it entered the European trade mark system and critically evaluating its role. On a practical level, this chapter seeks to understand the impact of distinctiveness through examples of levels of distinctiveness that have and have not been accepted to result in enhanced protection, and also to consider how tribunals have dealt with the overlap between distinctiveness for registrablity and likelihood of confusion purposes. However, the chapter ends with a note of warning: although it is possible to find a significant number of cases where distinctiveness is employed to enhance the scope of protection trade marks, in the vast majority of cases, this factor is either not mentioned or deemed irrelevant.

The Timing of Confusion

The conventional assumption in trade mark law is that the potential for confusion is assessed at the moment when a transactional decision is required. In ‘trade mark infringement cases in order to establish liability, a plaintiff must establish that there is a likelihood of confusion between the junior user’s mark and the senior user’s mark. . . Most cases involve confusion at the point of sale’. However two other variants have also been recognised by courts. This chapter reviews the authorities which establish liability for confusion (1) that occurs prior to a purchase transaction and which may even be corrected before the transaction occurs, or (2) is generated by the use of a sign in relation to a product after its purchase. The former is referred to as initial interest confusion while the latter is known as post-sale confusion. While seemingly presented as a question of timing—when is the relevant consumer confused? —each variant more fundamentally relates to the presence or absence of meaningful harm to the trade mark owner.

Non-Traditional Marks and the Likelihood of Confusion

The very label ‘non-traditional’ serves as a reminder that trade mark rules have developed around a traditional core of word and device marks. The likelihood of confusion test has in turn been influenced by this history. This chapter describes the manner in which a test developed around a template of traditional marks can be extended to disputes involving colours, shapes, and other less conventional marks. Such disputes inevitably raise novel issues. For instance, when may the defendant’s use of a colour on their products be construed as trade mark use, instead of merely incidental or decorative use? And how are courts to assess the similarity of colours, bearing in mind that consumers are deemed to have imperfect recollection? More pertinently, can such consumers distinguish between two shades of the same colour? Can two product shapes be sufficiently visually similar to satisfy the test, despite prominent and dissimilar word marks also being present on the products?