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The Confusion Test in European Trade Mark Law
0199674337, 9780199674336

Author / Uploaded
Ilanah Fhima
Dev S. Gangjee

Table of contents :
Title_Pages
isbn-9780199674336-front-matter-part-1 file://isbn-9780199674336-front-matter-part-1.pdf#page=1 Delete01 file://Delete01.pdf#page=1 Delete02 file://Delete02.pdf#page=1 isbn-9780199674336-front-matter-part-2 file://isbn-9780199674336-front-matter-part-2.pdf#page=1 isbn-9780199674336-front-matter-part-3 file://isbn-9780199674336-front-matter-part-3.pdf#page=1 isbn-9780199674336-front-matter-part-4 file://isbn-9780199674336-front-matter-part-4.pdf#page=1 isbn-9780199674336-book-part-1 file://isbn-9780199674336-book-part-1.pdf#page=1 isbn-9780199674336-book-part-2 file://isbn-9780199674336-book-part-2.pdf#page=1 isbn-9780199674336-book-part-3 file://isbn-9780199674336-book-part-3.pdf#page=1 isbn-9780199674336-book-part-4 file://isbn-9780199674336-book-part-4.pdf#page=1 isbn-9780199674336-book-part-5 file://isbn-9780199674336-book-part-5.pdf#page=1 isbn-9780199674336-book-part-6 file://isbn-9780199674336-book-part-6.pdf#page=1 isbn-9780199674336-book-part-7 file://isbn-9780199674336-book-part-7.pdf#page=1 isbn-9780199674336-book-part-8 file://isbn-9780199674336-book-part-8.pdf#page=1 Delete03 file://Delete03.pdf#page=1 Delete04 file://Delete04.pdf#page=1isbn-9780199674336-ack-1
(p.v) Acknowledgements
Ilanah Fhima and Dev S. Gangjee
(p.v) Acknowledgements
(p.v) Acknowledgements
Table_of_Cases
isbn-9780199674336-front-matter-part-1 file://isbn-9780199674336-front-matter-part-1.pdf#page=1 Delete01 file://Delete01.pdf#page=1 Delete02 file://Delete02.pdf#page=1 isbn-9780199674336-front-matter-part-2 file://isbn-9780199674336-front-matter-part-2.pdf#page=1 isbn-9780199674336-front-matter-part-3 file://isbn-9780199674336-front-matter-part-3.pdf#page=1 isbn-9780199674336-front-matter-part-4 file://isbn-9780199674336-front-matter-part-4.pdf#page=1 isbn-9780199674336-book-part-1 file://isbn-9780199674336-book-part-1.pdf#page=1 isbn-9780199674336-book-part-2 file://isbn-9780199674336-book-part-2.pdf#page=1 isbn-9780199674336-book-part-3 file://isbn-9780199674336-book-part-3.pdf#page=1 isbn-9780199674336-book-part-4 file://isbn-9780199674336-book-part-4.pdf#page=1 isbn-9780199674336-book-part-5 file://isbn-9780199674336-book-part-5.pdf#page=1 isbn-9780199674336-book-part-6 file://isbn-9780199674336-book-part-6.pdf#page=1 isbn-9780199674336-book-part-7 file://isbn-9780199674336-book-part-7.pdf#page=1 isbn-9780199674336-book-part-8 file://isbn-9780199674336-book-part-8.pdf#page=1 Delete03 file://Delete03.pdf#page=1 Delete04 file://Delete04.pdf#page=1Table_of_Equivalences
isbn-9780199674336-front-matter-part-1 file://isbn-9780199674336-front-matter-part-1.pdf#page=1 Delete01 file://Delete01.pdf#page=1 Delete02 file://Delete02.pdf#page=1 isbn-9780199674336-front-matter-part-2 file://isbn-9780199674336-front-matter-part-2.pdf#page=1 isbn-9780199674336-front-matter-part-3 file://isbn-9780199674336-front-matter-part-3.pdf#page=1 isbn-9780199674336-front-matter-part-4 file://isbn-9780199674336-front-matter-part-4.pdf#page=1 isbn-9780199674336-book-part-1 file://isbn-9780199674336-book-part-1.pdf#page=1 isbn-9780199674336-book-part-2 file://isbn-9780199674336-book-part-2.pdf#page=1 isbn-9780199674336-book-part-3 file://isbn-9780199674336-book-part-3.pdf#page=1 isbn-9780199674336-book-part-4 file://isbn-9780199674336-book-part-4.pdf#page=1 isbn-9780199674336-book-part-5 file://isbn-9780199674336-book-part-5.pdf#page=1 isbn-9780199674336-book-part-6 file://isbn-9780199674336-book-part-6.pdf#page=1 isbn-9780199674336-book-part-7 file://isbn-9780199674336-book-part-7.pdf#page=1 isbn-9780199674336-book-part-8 file://isbn-9780199674336-book-part-8.pdf#page=1 Delete03 file://Delete03.pdf#page=1 Delete04 file://Delete04.pdf#page=1List_of_Abbreviations
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(p.255) Bibliography
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isbn-9780199674336-index-group-1-index-1
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Ilanah Fhima and Dev S. Gangjee
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List_of_Abbreviations.pdf
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Citation preview

The Confusion Test in European Trade Mark Law

The Confusion Test in European Trade Mark Law I L A NA H F H I M A A N D D EV S . G A N G J E E

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3 Great Clarendon Street, Oxford, OX2 6DP, United Kingdom Oxford University Press is a department of the University of Oxford. It furthers the University’s objective of excellence in research, scholarship, and education by publishing worldwide. Oxford is a registered trade mark of Oxford University Press in the UK and in certain other countries © Ilanah Fhima and Dev S. Gangjee 2019 The moral rights of the authors have been asserted First Edition published in 2019 Impression: 1 All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted, in any form or by any means, without the prior permission in writing of Oxford University Press, or as expressly permitted by law, by licence or under terms agreed with the appropriate reprographics rights organization. Enquiries concerning reproduction outside the scope of the above should be sent to the Rights Department, Oxford University Press, at the address above You must not circulate this work in any other form and you must impose this same condition on any acquirer Crown copyright material is reproduced under Class Licence Number C01P0000148 with the permission of OPSI and the Queen’s Printer for Scotland Published in the United States of America by Oxford University Press 198 Madison Avenue, New York, NY 10016, United States of America British Library Cataloguing in Publication Data Data available Library of Congress Control Number: 2019946265 ISBN 978–0–19–967433–6 Printed and bound by CPI Group (UK) Ltd, Croydon, CR0 4YY Links to third party websites are provided by Oxford in good faith and for information only. Oxford disclaims any responsibility for the materials contained in any third party website referenced in this work.

Acknowledgements

The Confusion Test in European Trade Mark Law Ilanah Fhima and Dev S. Gangjee

Print publication date: 2019 Print ISBN-13: 9780199674336 Published to Oxford Scholarship Online: March 2021 DOI: 10.1093/oso/9780199674336.001.0001

(p.v) Acknowledgements Dev writes: This book would not have been completed without drawing upon the vast reservoirs of patience of my co-author Ilanah and that of our publisher OUP. I am profoundly grateful to both of them. Conversations with Ilanah about confusion doctrine have challenged some of my own biases and predispositions, revealed blind spots, and led to much more rigorous thinking. I am additionally indebted to the scholarly community that attends the annual Trade Mark Scholars Roundtable. Graeme Dinwoodie and Mark Janis have created and curated a wonderfully generative intellectual ecosystem. The range, pace, and quality of those conversations remind me of why I love what I do. Finally, it’s time to demonstrate my gratitude to Adil, Iman, and Nikita, by spending less time working on books and more time living a little on the weekends. Ilanah writes: My thanks to OUP for their support and willingness to include an unconscionably large number of images in this work. While I know that this is every publisher’s nightmare, their willingness to accommodate these images makes many of the points far easier to write about, and (I hope) much easier to understand. I am lucky to have been part of University College London’s Faculty of Law while researching and writing. It is a privilege to be based in such a supportive and collegiate institution. Particular thanks to Robin Jacob, Matt Fisher, and Daniela Simone. Dev has been generous with his ideas on both this project and many others. There can be no likelihood of confusion about my appreciation and love for Shimon and Alexander, Netanel, Chani, and Racheli—definitely far from average consumers.

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Acknowledgements Finally, we would both like to offer abundant thanks to Lynne Chave, whose keen eye, good judgment, and encyclopaedic knowledge of trade mark law (and fourfingered chocolate bars) has made this a far better book. (p.vi)

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List of Abbreviations CFI Court of First Instance CJEU Court of Justice of the European Union CSOH Court of Sessions Outer House CTM Community Trade Mark EUIPO European Union Intellectual Property Office (formerly OHIM) EUTM EU trade mark EUTMR EU Trade Mark Regulation EWCA Court of Appeal of England and Wales EWHC High Court of Justice of England and Wales EWPCC Patents County Court of England and Wales (now IPEC) FCAFC Federal Court of Australia Full Court GC General Court HL House of Lords IEHC High Court of Justice, Ireland IIC International Review of Intellectual Property and Competition Law (formerly International Review of Industrial Property and Copyright Law) INTA International Trademark Association IPEC Intellectual Property Enterprise Court MCAD Misleading and Comparative Advertising Directive NICA Court of Appeal of Northern Ireland OD Opposition Division OHIM Office of Harmonisation for the Internal Market (now EUIPO) RCD Registered Community Design TMD Trade Marks Directive TMDN Trade Mark and Design Network UCPD Unfair Commercial Practices Directive UKIPO UK Intellectual Property Office UKSC UK Supreme Court UKTM UK trade mark USPTO United States Patent and Trademark Office WIPO World Intellectual Property Organization

Table of Equivalences

Directive 89/104/ EEC ‘TMD 1988’ Relative Article 4 grounds for refusal Rights Article 5 conferred by a trade mark

Directive 2008/95/ EC ‘TMD 2008’

Directive (EU) 2015/ 2436 ‘Recast Directive’ or ‘TMD 2015’

Regulation (EC)  40/94 ‘CTMR 1994’

Regulation (EC) 207/ 2009 ‘CTMR 2009’

Regulation (EU) 2017/ 1001 ‘EUTMR’

UK Trade Marks Act 1994 ‘UK TMA’

Article 4

Article 5

Article 8

Article 8

Article 8

Section 5

Article 5

Article 10

Article 9

Article 9

Article 9

Section 10

Table of Cases CJEU Case C-9/93 IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH EU:C:1994:261�� 165n19 Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport (CJEU) EU:C:1997:528 ��2n7, 5n25, 6–7, 6n30, 8n43, 17, 17n2, 32n111, 65n322, 66, 67n8, 68, 68n10, 87–88, 88n79, 134n1, 135, 135n4, 135n8, 147n71, 157, 157n140, 160n1, 161, 161n5, 164, 164n15, 164n16, 164n17, 166n23, 181n107, 198n208, 246n66 Case C-210/96 Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt EU:C:1998:369�� 172n55, 186n141, 215n50 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (CJEU) EU:C:1998:442 �� 5n21, 6, 6n27, 7, 9, 10, 10n46, 17n10, 104n2, 106, 106n10, 107n15, 114, 124, 124n141, 125n154, 127, 133, 136, 136n11, 136n12, 137n13, 147n71, 147n73, 157n141, 160n4, 162–63, 162n7, 183n119, 198n208 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (AGO) EU:C:1998:159�� 106n12, 107n15 Case C-108/97 Windsurfing Chiemsee Produktions-und Vertriebs GmbH (WSC) v Boots-und Segelzubehör Walter Huber and Franz Attenberger EU:C:1999:230�� 139–40, 140n30, 147 Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (CJEU) EU:C:1999:323��17, 17n5, 19, 68n10, 137, 137n16, 139–40, 140n29, 140n31, 141–42, 141n38, 147, 147n69, 147n70, 147n72, 148, 172n55, 178n88, 198n208 Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (AGO) EU:C:1998:522��184n122 Case C-425/98 Marca Mode CV v Adidas AG (CJEU) EU:C:2000:339 �� 7n32, 137, 137n17, 147n71, 147n73, 183, 183n117, 225, 225n102 Case C-425/98 Marca Mode CV v Adidas AG (AGO) EU:C:2000:56�� 183n119, 184n123, 225n103 Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA EU:C:2003:169 ��3n11, 17n1 Case C-292/00 Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd EU:C:2003:9 �� 3n10 Joined Cases C-53/01 to C-55/01 Linde AG, Windward Industries and Rado Uhren AG EU:C:2003:206�� 146n61 Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau (AGO) EU:C:2002:650 [2003] ECR I-3793�� 233n10, 234, 234n16, 241n49 Case C-191/01 P Wrigley v OHIM EU:C:2003:579 �� 42n180 Case C-206/01 Arsenal Football Club v Reed EU:C:2002:651 �� 2n6, 3n9, 193n189, 219n72, 226–28, 226n111, 237n32 Case C-408/01 Adidas v Fitnessworld (AGO) EU:C:2003:404, [2003] ECR I-12537��17n3, 246n67 Case C-136/02 P Mag Instrument Inc. v OHIM EU:C:2004:592�� 241n49 Case C‑245/02 Anheuser-Busch Inc. v Budĕjovický Budvar np EU:C:2004:717 ��3n9, 190n168, 227, 227n114, 228 Case C-404/02 Nichols v Registrar of Trade Marks EU:C:2004:538��144, 144n50 Case C-3/03 P Matratzen Concord v OHIM EU:C:2004:233�� 69n12 Case C-106/03 Vedial v OHIM EU:C:2004:611 �� 163n8 Case C-228/03 The Gillette Company and Gillette Group Finland Oy v LA-Laboratories Ltd Oy EU:C:2005:177 �� 12–13 Case C-353/03 Societe des Produits Nestle SA v Mars UK Ltd EU:C:2005:432�� 67n5 Case C-120/04 Medion AG v Thomson multimedia Sales Germany & Austria GmbH EU:C:2005:594��67n2, 70, 70n14, 74, 74n36, 99, 100–1, 155–56, 156n134 Case C-206/04 P Mülhens v OHIM EU:C:2006:194 �� 19n14, 47n202 Case C-361/04 P Ruiz-Picasso v OHIM (CJEU) EU:C:2006:25��46n199, 62–63, 62n305, 154n123, 154n126, 210–11, 211n28, 218, 218n68, 219–20, 227, 227n116, 228n118, 229n124

xiv Table of Cases Case C-361/04 P Ruiz-Picasso v OHIM (AGO) EU:C:2005:531 �� 218n70 Case C-416/04 P Sunrider v OHIM EU:C:2006:310 �� 108n21 Case C-24/05 P August Storck v OHIM EU:C:2006:421�� 218n67 Case C-48/05 Adam Opel AG v Autec AG EU:C:2007:55 �� 3n9 Case C-145/05 Levi Strauss & Co. v Casucci SpA EU:C:2006:264��156n137 Case C-214/05 P Rossi v OHIM EU:C:2006:494��117n89, 117n90, 117–18, 118n95, 121, 121n117, 122n129 Case C-235/05 P L’Oréal v OHIM EU:C:2006:271��73n31, 143n46, 143n48, 157n147, 162n7, 198n209, 199n214 Case C-334/05 P OHIM v Shaker EU:C:2007:333�� 71, 71n19, 74, 74n37 Case C-412/05 P Alcon Inc v OHIM (CJEU) EU:C:2007:252�� 170n46, 176n74, 179n94, 182n109, 219n73 Case C-412/05 P Alcon Inc v OHIM (AGO) EU:C:2006:687�� 219n73, 219n74 Case C-16/06 P Les Éditions Albert René Sarl v OHIM EU:C:2008:739�� 23n49, 46n200 Case C-17/06 Céline SARL v Céline SA EU:C:2007:497 �� 10, 10n50 Case C-171/06 P T.I.M.E. ART v OHIM EU:C:2007:171�� 48n216, 129–30, 130n195, 143, 143n45, 157n145, 190n166, 198n210 Case C-193/06 P Nestlé v OHIM EU:C:2007:539�� 74n36 Case C-196/06 P Alecansan v OHIM EU:C:2007:159��120n112 Case C-234/06 P Il Ponte Finanzaria v OHIM EU:C:2007:514�� 163n8, 165n21, 194, 194n192 Case C-488/06 P L&D v OHIM EU:C:2008:420��80n52, 80n53 Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd EU:C:2008:339 ��188n156, 189n159, 190n168, 209, 209n18 Case C-102/07 Adidas AG v Marca Mode (CJEU) EU:C:2008:217�� 30n92, 163n13 Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd EU:C:2008:655 �� 221n84, 221n85 Case C-398/07 P Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM EU:C:2009:288��119n108 Case C-487/07 L’Oréal SA v Bellure NV EU:C:2009:378 ��3n9, 4n20 Case C-495/07 Silberquelle GmbH v Maselli Strickmode GmbH (AGO) EU:C:2008:633�� 219n75 Case C-498/07 P Aceites del Sur-Coosur SA v Koipe Corporación SL, OHIM EU:C:2009:503�� 179n90, 185n133, 218n63 Joined Cases C-236/08, 238/08 & C-237/08 Google France Sarl v Louis Vuitton Malletier (CJEU) EU:C:2010:159 �� 3n9, 4n14, 6, 6n28, 181n105, 209–11, 210n22, 211n26, 213, 224n100 Joined Cases C-236/08 to C-238/08, Google France SARL v Louis Vuitton Malletier SA (AGO) EU:C:2009:569�� 216n56 Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günther Guni and trekking.at Reisen GmbH EU:C:2010:163 ��3n9, 6, 6n29, 25–26, 26n77, 209–11, 209n20, 210n24, 213, 224n100 Case C-558/08 Portakabin Ltd v Primakabin BV EU:C:2010:416 �� 210–11, 211n27, 213 Case C-23/09 ecoblue AG v OHIM EU:C:2010:35�� 78n44 Case C-48/09 P Lego Juris v OHIM EU:C:2010:516�� 14, 14n66, 234n19 Case C-51/09 P Becker v Harman International Industries EU:C:2010:368��67n4, 72n23, 102, 102n152 Case C-159/09 Lidl SNC v Vierzon Distribution SA (CJEU) EU:C:2010:696�� 222n87 Case C-159/09 Lidl SNC v Vierzon Distribution SA (AGO) EU:C:2010:499�� 222n87 Case C‑254/09 P Calvin Klein Trademark Trust v OHIM, Zafra Marroquineros SL EU:C:2010:488�� 163n9 Case C-323/09 Interflora Inc and another v Marks and Spencer plc EU:C:2011:604 �� 3n9 Case C-353/09 P Perfetti Van Melle v OHIM EU:C:2011:73�� 72, 72n26 Case C-482/09 Budějovický Budvar, národní podnik, v Anheuser-Busch Inc, EU:C:2011:605�� 185n133 Case C-552/09 P Ferrero SpA v OHIM EU:C:2011:177��18n12, 163n9 Case C‑46/10 Viking Gas A/S v Kosan Gas A/S, previously BP Gas A/S (CJEU) EU:C:2011:485��194n190 Case C‑46/10 Viking Gas A/S v Kosan Gas A/S, previously BP Gas A/S (AGO) EU:C:2011:222��194n190 Case C-119/10 Frisdranken Industrie Winters BV v Red Bull GmbH (AGO) ECLI:EU:C:2011:258 �� 4n15

Table of Cases xv Case C-216/10 P Lufthansa AirPlus Servicekarten v OHIM EU:C:2010:719�� 31n103, 39n167 Case C 307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks EU:C:2012:361��188n157 Case C-317/10 P Union Investment Privatfonds v UniCredito Italiano EU:C:2011:405�� 22n46, 195n196 Case C-370/10 P Ravensburger v OHIM EU:C:2011:149�� 96n121 Case C-388/10 P Muñoz Arraiza v OHIM EU:C:2011:185��126n163 Case C-532/10 P adp Gauselmann v OHIM EU:C:2011:433 ��31n104, 47n201, 101n147, 178n83 Case C-196/11 P Formula One Licensing v OHIM EU:C:2012:314�� 140n32, 202n228 Case C-198/11 P Lan Airlines v OHIM EU:C:2012:289 �� 46n196 Case C-327/11 P United States Polo Association v OHIM EU:C:2012:550��21–22n36, 41, 48n222 Case C-354/11 P Maurice Emram v OHIM, Guccio Gucci SpA, EU:C:2012:167��190n167 Case C-406/11 P Atlas v OHIM EU:C:2012:136��106n8, 109n31, 118n99 Case C-655/11 P Seven for all mankind v Seven EU:C:2013:94�� 146n65 Case C-12/12 Colloseum Holding AG v Levi Strauss & Co EU:C:2013:253�� 67n6 Case C-42/12 P Hrbek v OHIM EU:C:2012:765��157n145 Case C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd EU:C:2013:497��130n198, 155, 155n132, 189n162, 189–90n164 Case C-268/12 P Cadila Healthcare v OHMI EU:C:2013:296�� 125n148, 127n174, 186n139 Case C-281/12 Trento Sviluppo srl, Centrale Adriatica Soc. coop. arl v Autorità Garante della Concorrenza e del Mercato EU:C:2013:859��228n122 Case C-422/12 P Industrias Alen v The Clorox Company EU:C:2014:57�� 20n21 Case C-558/12 P OHIM v riha WeserGold Getranke GmbH EU:C:2014:22 �� 163n8 Case C-591/12 P Bimbo v OHIM EU:C:2014:305 �� 67n3, 72, 72n28, 90n97, 142n42 Case C-597/12 P Isdin v Bial-Portela EU:C:2013:672 �� 106n9 Case C-205/13 Hauck GmbH v Stokke (AGO) EU:C:2014:322�� 233n11 Joined Cases C-581/13 P and C-582/13 P Intra-Presse SAS v OHIM, Golden Balls Ltd EU:C:2014:2387�� 60n297, 177n81 Case C‑670/13 P The Cartoon Network Inc v OHIM, Boomerang TV SA EU:C:2014:2024�� 171n53, 185n132 C-20/14 BGW Marketing - & Management- Service GmbH v Bodo Scholz EU:C:2015:714�� 64n314 Case C-142/14 P Sunrider v OHIM EU:C:2015:371 �� 113n60, 113n65 Case C-270/14 P Debonair Trading Internacional v OHIM EU:C:2015:688 ��29, 195n198 Case C-579/14 P Junited Autoglas Deutschland v OHMI EU:C:2015:374�� 59n285 Case C-603/14 P El Corte Inglés v OHIM EU:C:2015:807 �� 18n12, 60n298 Case C-43/15 P BSH Bosch und Siemens Hausgeräte GmbH v EUIPO, LG Electronics Inc EU:C:2016:837��198n212 Case C-190/15 P Fetim v OHIM EU:C:2015:778�� 157n142, 198n211 Case C-223/15 Combit Software GmbH v Commit Business Solutions Ltd EU:C:2016:719��178n87 Case C-278/15 P Royal County of Berkshire Polo Club v OHIM EU:C:2016:20��21–22n36 Case C-562/15 Carrefour Hypermarchés SAS v ITM Alimentaire International SASU (CJEU) EU:C:2017:95�� 222, 222n88, 222n90 Case C-562/15 Carrefour Hypermarchés SAS v ITM Alimentaire International SASU (AGO) EU:C:2016:781�� 222n90 Case C-84/16 P Continental Reifen Deutschland v Compagnie générale des établissements Michelin and EUIPO EU:C:2017:596�� 65n316, 65n318 Case C-93/16 Ornua Co-operative Limited v Tindale & Stanton Ltd España, SL EU:C:2017:571��185n133 Case C-163/16 Christian Louboutin SAS v Van Haren Schoenen BV EU:C:2018:423 ��254n110 Case C-361/16 P Franmax v EUIPO EU:C:2016:834�� 49n233, 55n260 Case C 395/16 DOCERAM GmbH v CeramTec GmbH EU:C:2018:172 �� 234n19 Case C-402/16 P Market Watch v EUIPO EU:C:2016:924 �� 36n150 Case C-437/16 P Wolf Oil v EUIPO EU:C:2017:737 �� 47n207 Case C-224/17 P Hernández Zamora v EUIPO and Rosen Tantau EU:C:2017:791�� 104n2 Case C-726/17 P Tetra Pharm (1997) Ltd v EUIPO, Sebapharma GmbH EU:C:2018:561�� 177n81 Case C-371/18 [2018] OJ C 276 (6 Aug 2018)�� 171n51 Case C-449/18 P [2018] OJ C 392/3 (29 Oct 2018)�� 169n40

xvi Table of Cases GENERAL COURT Case T-6/01 Matratzen Concord v OHMI EU:T:2002:261�� 69, 69n11, 69n13, 71, 73, 73n34, 77, 93n112, 94 Case T-99/01 Mystery Drinks GmbH v OHIM EU:T:2003:7��19–20, 20n16 Case T-104/01 Oberhauser v OHIM EU:T:2002:262�� 84–85, 84n64, 84n66, 105n4 Case T-129/01 José Alejandro v OHIM EU:T:2003:184 �� 49n229, 86n76 Case T-292/01 Phillips Van Heusen Corp v OHIM EU:T:2003:264�� 47n203 Case T-317/01 M+M v OHMI EU:T:2004:195�� 106n8 Case T-115/02 AVEX v OHIM EU:T:2004:234�� 95n117 Case T-183/02 El Corte Inglés v OHMI (MUNICOR) EU:T:2004:79�� 32n112, 47n211 Case T-185/02 Ruiz-Picasso v OHMI EU:T:2004:189��154n122 Case T-186/02 BMI Bertollo v OHIM EU:T:2004:197�� 143n43 Case T-194/03 Il Ponte Finanziaria v OHMI EU:T:2006:65��22n46, 22n48, 165n21, 195n195 Case T-286/02 Oriental Kitchen v OHMI EU:T:2003:311��74n38, 77n40 Case T-356/02 Vitakraft-Werke Wührmann v OHIM EU:T:2004:292 �� 91n105, 93n111 Case T-359/02 Chum v OHIM EU:T:2005:156��85n70, 86n74 Case T-112/03 L’Oréal v OHIM EU:T:2005:102�� 143n46, 157n145 Case T-117/03 New Look v OHIM EU:T:2004:293 �� 27, 86n76, 89n88 Case T-126/03 Reckitt Benckiser (España), SL v OHIM EU:T:2005:288�� 111n43, 154n128, 171n54 Case T-153/03 Inex v OHIM EU:T:2006:157 �� 95n117 Case T-169/03 Sergio Rossi v OHMI EU:T:2005:72�� 117, 117n89, 122n129, 129, 129n193 Case T-312/03 Wassen International v OHMI EU:T:2005:289�� 78n46 Case T-385/03 Miles Handelsgesellschaft International mbH v OHIM EU:T:2005:276��49n228, 89n87 Case T-389/03 Dainichiseika Colour & Chemicals Mfg Co Ltd v OHMI EU:T:2008:114 �� 30, 30n94, 52n250 Case T-418/03 La Mer Technology Inc v OHIM EU:T:2007:299��111n44, 115n74, 125n149, 128n179 Case T-3/04 Simonds Farsons Cisk v OHMI EU:T:2005:418��80n52, 81n56 Case T-7/04 Shaker v OHMI EU:T:2008:481 ��157n147 Case T-29/04 Castellblanch SA v OHIM EU:T:2005:438��132n208 Case T-34/04 Plus v OHMI EU:T:2005:248�� 50n240 Case T-150/04 Mülhens v OHMI EU:T:2007:214��122n130 Case T 202/04 Madaus v OHIM, Optima Healthcare ECLI:EU:T:2006:106��182n111 Case T-256/04 Mundipharma v OHMI EU:T:2007:46 �� 47n213, 183n115 Case T-333/04 House of Donuts v OHMI EU:T:2007:105�� 58n277, 77n41 Case T-346/04 Sadas SA v OHIM, LTJ Diffusion EU:T:2005:420��184n126 Joined Cases T-350/04 to T-352/04 Bitburger Brauerei v OHIM EU:T:2006:330�� 20n17 Case T‑363/04 Koipe Corporación SL v OHIM, Aceites del Sur SA EU:T:2007:264�� 179n90 Case T-88/05 Quelle AG v OHMI EU:T:2007:45�� 19n15, 22n45, 26 Case T-105/05 Assembled Investments (Proprietary) v OHMI EU:T:2007:170��119n108 Case T-133/05 Meric v OHMI EU:T:2006:247�� 90n89 Case T-328/05 Apple Computer v OHIM, TKS-Teknosoft EU:T:2008:238 �� 171n53 Case T-443/05 El Corte Inglés SA v OHIM EU:T:2007:219 �� 109n30, 121n125, 122n132, 124n142 Case T-48/06 Astex Therapeutics Ltd v OHIM EU:T:2008:329 ��112n55, 114n68, 119n104, 182n111 Case T-112/06 Inter-Ikea v OHMI EU:T:2008:10�� 47n204, 81n54 Case T-116/06 Oakley v OHMI EU:T:2008:399��120, 120n114 Case T-134/06 Xentral LLC v OHIM EU:T:2007:387��95n118, 143n46, 157n146, 199n215 Case T-149/06 Castellani SpA v OHIM EU:T:2007:350 �� 21n33 Case T-175/06 Coca-Cola v OHMI EU:T:2008:212��108n24, 109n29, 119n107, 127n171 Case T-205/06 NewSoft Technology v OHMI EU:T:2008:163�� 78n46 Case T-221/06 Hipp & Co KG v OHIM EU:T:2009:330 ��31n101, 31n102, 47n212, 157n142 Case T-228/06 Giorgio Beverly Hills v OHMI EU:T:2008:558�� 90n95 Case T-246/06 Redcats v OHMI EU:T:2008:141 �� 48n217 Case T-303/06 UniCredito Italiano v OHMI EU:T:2010:160�� 22n46, 195n196 Case T-303/06 RENV UniCredito v OHMI EU:T:2014:988�� 22n46, 195n197 Case T-340/06 Stradivarius Espana SA v OHIM EU:T:2008:241�� 61n302 Case T-363/06 Honda Motor Europe Ltd v OHIM EU:T:2008:319�� 65n315, 130n195, 157n142

Table of Cases xvii Case T 95/07 Aventis Pharma v OHIM, Nycomed EU:T:2008:455 ��182n113 Case T-106/07 Alcon v OHMI EU:T:2008:340��183n115 Case T-109/07 L’Oréal SA v OHIM, Spa Monopole EU:T:2009:81�� 166n26 Case T-118/07 PPTV v OHIM EU:T:2011:58��76, 94n115, 106n8, 123n134 Case T-290/07 MIP Metro Group Intellectual Property GmbH & Co KG v OHIM EU:T:2008:562 �� 83n61 Case T-316/07 Commercy v OHMI EU:T:2009:14 �� 116n81, 117n88, 123n133 Case T-321/07 Lufthansa AirPlus Servicekarten v OHIM EU:T:2010:64�� 31n103 Case T-357/07 Focus Magazin Verlag v OHMI EU:T:2008:581�� 92n106 Case T-366/07 Procter & Gamble v OHMI EU:T:2010:394 �� 90n90 Case T-386/07 Peek & Clopenburg v OHIM EU:T:2009:420 �� 25n75 Case T-413/07 Bayerische Gesellschaft fur Innovation und Wissenstransfer mbH v OHIM EU:T:2009:34 �� 27n81 Case T-435/07 New Look v OHIM EU:T:2008:534 �� 178n86 Case T-486/07 Ford Motor Company v OHIM EU:T:2011:104�� 179n92, 220n80 Case T-502/07 Intersport International Corp. GmbH v OHIM EU:T:2011:223�� 21n32, 62n303 Case T-5/08 Nestle v OHIM EU:T:2010:123�� 37n159, 38 Case T-24/08 Weldebräu v OHIM EU:T:2010:71�� 145, 145n59, 235, 235n20, 246n68 Case T-33/08 Bastos Viegas v OHIM EU:T:2009:197 ��132n207 Case T-80/08 CureVac GmbH v OHIM EU:T:2009:416�� 21n30 Case T-84/08 Intesa Sanpaolo SpA v OHIM EU:T:2011:144�� 24n56, 31n105, 32n110, 85n72 Case T-148/08 Beifa Group Co. Ltd v OHMI EU:T:2010:190��63, 235–36n22 Case T-149/08 Abbott Laboratories v OHIM, aRigen Inc, EU:T:2010:398��183n116 Case T-162/08 Frag Comercio Internacional v OHMI EU:T:2009:432�� 74, 95n120 Case T-201/08 Market Watch v OHMI EU:T:2010:408�� 23n55, 35n143 Case T-243/08 Ravensburger v OHIM EU:T:2010:210�� 96n121 Case T-260/08 Indo Internacional v OHMI EU:T:2012:23��25n70, 33n126, 59n281 Case T-277/08 Bayer Healthcare v OHIM EU:T:2009:433 ��128n175 Case T-288/08 Cadila Healthcare v OHMI EU:T:2012:124��125n148 Case T-292/08 Inditex v OHIM EU:T:2010:399�� 31n102, 36n145 Case T-331/08 REWE-Zentral v OHIM EU:T:2010:23��23n54, 25n76 Case T-361/08 Peek & Cloppenberg and van Graaf v OHIM EU:T:2010:152�� 32n107, 37, 37n158, 40n170, 47n210 Case T-364/08 2nine v OHIM EU:T:2010:115 �� 121n119, 124n142 Case T-407/08 MIP Metro v OHIM EU:T:2010:256 ��157n142 Case T-466/08 Lancome Parfums et Beaute & Cie v OHIM EU:T:2011:182��21n35, 25n72, 50n241 Case T-472/08 Companhia Muller de Bebdias v OHIM EU:T:2010:347�� 20n17, 49n235, 65n320, 97n127 Case T-477/08 Mundipharm v OHIM EU:T:2010:72 �� 21n26, 123n135 Case T-483/08 Giordano Enterprises Ltd v OHMI EU:T:2009:515�� 117n91, 121n120, 122, 122n131 Case T-487/08 Kureha Corp v OHIM EU:T:2010:237�� 20n19 Case T-488/08 Galileo International Technology LLC v OHIM EU:T:2011:574�� 41n174 Case T-490/08 CM Capital Markets v OHMI EU:T:2010:250�� 88, 88n80, 88n83 Case T-501/08 NEC Display Solutions Europe v OHIM EU:T:2011:527��39n169, 40–41, 57n268, 118n96, 157n142 Case T-557/08 mPAY24 v OHIM EU:T:2010:287��157n142 Case T-580/08 PJ Hungary v OHIM EU:T:2011:227��21n27, 33n123, 151n101, 153n112 Case T-10/09 Formula One Licensing v OHMI EU:T:2014:1061�� 34n129 Case T-30/09 Engelhorn v OHIM EU:T:2010:298��27n79, 67n7, 144n51 Case T-41/09 Hipp v OHIM EU:T:2012:163�� 33n119, 146n67 Case T-76/09 Mundipharma v OHMI EU:T:2011:298 ��120n113 Case T-106/09 adp Gauselmann v OHMI EU:T:2010:380 �� 31n104, 36n156, 101n147 Case T-129/09 Bongrain v OHIM EU:T:2011:193�� 115n77, 126n164, 126n168 Case T-131/09 Farmeco v OHMI EU:T:2010:458�� 74, 85n70, 85n71 Case T-138/09 Munoz Arraiza v OHMI EU:T:2010:226��126n163 Case T-189/09 Poloplast v OHIM EU:T:2011:611�� 65n315 Case T-194/09 Lan Airlines v OHIM EU:T:2011:34�� 46n196

xviii Table of Cases Case T-203/09 Olymp Bezner GmbH & Co. KG v OHIM EU:T:2011:195 �� 40n170, 85n73 Case T-209/09 Alder Capital Ltd v OHIM EU:T:2011:169�� 22n39, 36n151 Case T 220/09 Ergo Versicherungsgruppe v OHIM, Société de développement et de recherche industrielle EU:T:2011:392�� 176n75 Case T-228/09 United States Polo Association v OHMI EU:T:2011:170��21–22n36 Case T-244/09 Accenture Global Services v OHIM EU:T:2010:430 ��157n144 Case T-274/09 Deutsche Bahn v OHMI EU:T:2011:451��30n99, 64n312, 148n76, 150n89, 150n93, 153n114, 157n142 Case T-276/09 Kavaklidere-Europe v OHMI EU:T:2012:313�� 36n147, 108n22 Case T-301/09 IG Communications Ltd v OHIM EU:T:2012:473�� 24n65 Case T-307/09 Earle Beauty v OHIM EU:T:2010:509 �� 178n86 Case T-344/09 Hearst Communications v OHMI EU:T:2012:324��45n195, 46n198, 47n205 Case T-365/09 Michalakopoulou Ktimatiki Touristiki AE v OHIM EU:T:2010:455�� 111n47 Case T-376/09 Glenton España v OHMI EU:T:2011:225 ��38–39, 38n161, 49n223 Case T-385/09 Annco Inc v OHIM EU:T:2011:49�� 58n272, 101n142 Case T-415/09 New Yorker SHK Jeans GmbH & Co KG v OHIM EU:T:2011:550�� 58n280 Case T-425/09 Honda Motor v OHMI EU:T:2011:576�� 128n176, 142n42, 143n49 Case T-437/09 Oyster Cosmetics SpA v OHIM EU:T:2011:23�� 21n25 Case T-39/10 El Corte Inglés SA v OHIM EU:T:2012:502 ��122n126 Case T-60/10 Jackson International v OHMI EU:T:2012:348�� 78n45 Case T-74/10 Flaco‑Geräte GmbH v OHIM EU:T:2011:207 �� 218n66 Case T-77/10 Certmedica International v OHMI EU:T:2012:95��24n58, 34n137, 112n56, 114n73 Case T-88/10 Inter IKEA Systems v OHMI EU:T:2011:368��25n75, 40–41, 40n172 Case T-107/10 Procter & Gamble Manufacturing Cologne v OHMI EU:T:2011:551��34n135, 34n139 Case T-150/10 Telefónica O2 Germany v OHMI EU:T:2011:552�� 119n102, 125n152, 128n185 Case T-157/10 Barilla v OHIM EU:T:2012:148 ��36n152, 143n47, 157n142, 158n151 Case T-161/10 Longevity Health Products v OHMI EU:T:2011:244��24n61, 33n120, 109n34, 112n51, 115n75, 125n147, 132n207 Case T-204/10 Lancôme v OHMI EU:T:2012:523�� 146n64 Case T-216/10 Monster Cable Products v OHMI EU:T:2011:691�� 48n215 Case T-238/10 Stephanie Scatizza v OHIM EU:T:2011:613 �� 39n165 Case T-244/10 Tsakiris-Mallas v OHMI EU:T:2012:219��39n164, 49n227, 89n86, 97n126, 144n54, 157n142 Case T-273/10 Olive Line International v OHMI EU:T:2012:246 ��52n250, 88n81, 157n142 Case T-304/10 dm-drogerie markt v OHMI EU:T:2011:602 �� 31n100, 39n168 Case T-342/10 Hartmann v OHMI EU:T:2012:290��24n59, 36n146, 111n41, 119n105 Case T-356/10 Nike International v OHMI EU:T:2011:543�� 33n124 Case T-357/10 Kraft Foods Schweiz v OHMI EU:T:2012:312��34n139, 59n283, 76, 84n67 Case T-377/10 Preparados Alimenticios v OHMI EU:T:2013:600�� 39n166, 84n67, 150n86, 152n104, 152n108 Case T-424/10 Dosenbach-Ochsner v OHMI EU:T:2012:58��28, 28n85, 29n90, 30, 54n257, 55 Case T-444/10 ESGE v OHMI EU:T:2013:89�� 45n194 Case T-483/10 The Pukka Luggage v OHMI EU:T:2011:692 �� 108n28, 128n178 Case T-500/10 Dorma v OHIM EU:T:2011:679�� 19n14 Case T-517/10 Pharmazeutische Fabrik Evers v OHMI EU:T:2012:372��39n168, 40–41, 40n171, 59n291, 60n300 Case T-519/10 Seikoh Giken v OHMI EU:T:2012:291�� 35n141, 48n219 Case T-522/10 Hell Energy Magyarország v OHMI EU:T:2012:9 �� 25n75, 32n114 Case T-549/10 Natura Selection v OHMI EU:T:2014:949��120n114 Case T-569/10 Bimbo v OHMI EU:T:2012:535 �� 142n42 Case T-584/10 Yilmaz v OHMI EU:T:2012:518��108n23, 114n67, 119n107, 126n160 Case T-585/10 Aitic Penteo v OHMI EU:T:2012:251�� 22n40, 130n195 Case T-586/10 Aktieselskabet af 21. november 2001 v OHMI EU:T:2011:722 �� 63n310, 115n77, 154n127 Case T-66/11 Present-Service Ullrich GmbH & Co. KG v OHIM EU:T:2013:48�� 25n76, 36n155, 39n168, 59n288 Case T-89/11 Nanu-Nana Joachim Hoepp v OHMI EU:T:2015:479�� 118n97, 120n114

Table of Cases xix Case T-97/11 Rovi Pharmaceuticals GmbH v OHIM EU:T:2013:474�� 110n35, 112n50, 125n148, 127n174 Case T-135/11 Clorox v OHMI EU:T:2012:356�� 20n21 Case T-143/11 Consorzio vino Chianti Classico v OHIM EU:T:2012:645��44n186, 84n66, 84n67 Case T-179/11 Sports Eybl & Sports Experts GmbH EU:T:2012:254�� 33n125, 144n53 Case T-227/11 Wall v OHMI EU:T:2012:375��129n192 Case T-237/11 Lidl Stiftung v OHIM EU:T:2013:11 ��25n69, 108n26, 116n86, 125n156, 127n172, 158n151 Case T-295/11 Duscholux Ibérica v OHMI EU:T:2012:420�� 26, 26n77, 82n57 Case T-353/11 Event v OHMI EU:T:2013:147 ��76, 123n137 Case T-361/11 Hand Held Products v OHMI EU:T:2012:377 ��115n77, 116n83, 123n136, 127n170 Case T-393/11 Masottina SpA v OHIM EU:T:2013:24 ��25n68, 35n140, 59n289, 143n43 Case T-437/11 Golden Balls Ltd v OHIM EU:T:2013:441��25n67, 60n296, 157n143 Case T-450/11 Galileo International Technology v OHMI EU:T:2014:771 ��123n138 Case T-451/11 Gigabyte Technology v OHMI EU:T:2013:13��35n142, 36n153, 109n32, 114n72, 125n153, 128n184 Case T-460/11 Scandic Distilleries v OHMI EU:T:2012:432��21n28, 38n162, 146n68, 157n142 Case T-467/11 Colgate Palmolive v OHIM EU:T:2013:633 �� 90n91 Case T-504/11 Paul Hartmann AG v OHIM EU:T:2013:57 ��108n25, 116n84, 117n89, 125n154 Case T-505/11 Aldi v OHIM EU:T:2013:332 �� 34n139 Case T-514/11 i-content v OHMI EU:T:2013:291 �� 113n64, 124n142 Case T-528/11 Aloe Vera of America v OHMI EU:T:2014:10�� 52n252, 57n267 Case T-529/11 Evonik Industries v OHMI EU:T:2012:598�� 21n29, 33n122, 78n45, 86n75 Case T-537/11 Hultafors Group v OHMI EU:T:2013:207��22n42, 79n49 Case T-555/11 tesa SE v OHMI EU:T:2012:594�� 41n176, 93n113 Case T-558/11 Atlas v OHIM EU:T:2012:615�� 117n89 Case T-569/11 Gitana v OHIM EU:T:2013:462 ��22n38, 78n46, 125n146 Case T-580/11 McNeil AB v OHIM, Alkalon ApS, EU:T:2013:301��183n115 Case T-599/11 Eni v OHMI EU:T:2014:269�� 47n214 Case T-600/11 Schuhhaus Dielmann v OHMI EU:T:2014:33�� 79n50 Case T-623/11 Pico Food v OHMI EU:T:2014:199 �� 92n107 Case T-624/11 Yueqing Onesto Electric v OHIM EU:T:2013:137�� 27, 59n282, 157n142 Case T-41/12 LS Fashion v OHMI EU:T:2015:125�� 62n303 Case T-54/12 K2 Sports Europe v OHMI EU:T:2013:50�� 34n136, 93n108 Case T-55/12 Su-Shan Chen v AM Denmark A/S EU:T:2013:219��64 Case T-89/12 Repsol YPF v OHIM EU:T:2013:335�� 65n315 Case T-170/12 Beyond Retro v OHMI EU:T:2014:238��45n193, 58n276, 111n42, 121n119 Case T-195/12 Nuna International v OHMI EU:T:2014:804 �� 120n110, 124n142 Case T-218/12 Micrus Endovascular v OHMI EU:T:2014:760�� 113n59 Case T-221/12 Sunrider v OHIM EU:T:2014:25��113, 113n60, 113n65, 116n85, 119n106, 124n142 Case T-229/12 Advance Magazine Publishers v OHMI EU:T:2014:95��27 Case T-231/12 Rocket Dog Brands v OHIM EU:T:2013:264 �� 97n124 Case T‑247/12 Argo Group International Holdings v OHIM, Arisa Assurances (ARIS) EU:T:2014:258�� 171n49 Case T-285/12 The Cartoon Network v OHIM, Bommerang TV SA EU:T:2013:520��185n132 Case T-288/12 EI du Pont de Nemours v OHMI EU:T:2014:196��120n115 Case T-328/12 Mundipharma GmbH v OHIM, AFT Pharmaceuticals Ltd EU:T:2013:537�� 163n11 Case T-330/12 Hut.com v OHMI EU:T:2014:569�� 58n275 Case T-338/12 Rocket Dog Brands v OHIM EU:T:2013:327 �� 43n182 Case T-342/12 Fuchs v OHIM EU:T:2014:858��29n88, 30n92, 37n159 Case T-361/12 Premiere Polish v OHIM EU:T:2013:630 ��36n154, 36n156, 80n51, 81 Case T-356/12 Debonair Trading Internacional v OHMI EU:T:2014:178 �� 23n52 Case T-378/12 Capitalizaciones Mercantiles v OHIM EU:T:2013:574 �� 65n316 Case T-379/12 Electric Bike World v OHIM EU:T:2013:529 �� 108n27, 114n66, 124n145 Case T-382/12 Kampol v OHMI EU:T:2014:563 ��130n195 Case T-383/12 Ferienhauser zem See v OHIM EU:T:2014:12 �� 74, 94n116, 157n142 Case T-388/12 Singer v OHIM EU:T:2013:536��59n290, 109n33, 111n48, 130n195

xx Table of Cases Case T-395/12 Fetim v OHMI EU:T:2015:92�� 87n77, 157n142, 158n148 Case T‑423/12 Skype Ultd v OHIM, Sky Plc EU:T:2015:260�� 151n102, 185n134 Case T-436/12 Deutsche Rockwool Mineralwoll v OHMI EU:T:2015:477�� 23n51 Case T-444/12 Novartis v OHMI EU:T:2014:886�� 43n182 Case T 445/12 Koscher + Würtz v OHMI EU:T:2014:829�� 25n75, 38–39n163, 220n79 Case T-453/12 Zoo Sports Ltd v OHIM, K-2 Corp EU:T:2013:532��180n100 Case T-480/12 Coca-Cola Company v OHMI EU:T:2014:1062�� 18n11 Case T-486/12 Golam v OHMI EU:T:2014:508�� 140n33 Case T-487/12 Eckes-Granini v OHIM EU:T:2013:637��45n195, 46n196, 76, 84n67 Case T-493/12 Sanofi v OHMI EU:T:2014:807�� 34n138, 112n53 Case T-502/12 Ferring v OHMI EU:T:2014:192��34n138, 65n321, 181n108, 182n113 Case T-505/12 Compagnie des montres Longines, Francillon v OHMI EU:T:2015:95 ��111n42, 130–31, 131n200 Case T-509/12 Advance Magazine Publishers v OHMI EU:T:2014:89�� 49n231, 78n42 Case T-515/12 El Corte Inglés v OHIM EU:T:2014:882 �� 60n298 Case T-516/12 Ted-Invest v OHMI EU:T:2014:811�� 118n98, 126n159 Case T-523/12 Rani Refreshments v OHMI EU:T:2014:571�� 20n18 Case T-531/12 Tifosi Optics v OHMI EU:T:2014:855�� 65n315, 106n8 Case T-533/12 IBSolution v OHMI EU:T:2013:582�� 33n121, 74, 78n48, 80, 157n142 Case T-544/12 Pensa Pharma v OHMI EU:T:2015:355�� 36n148 Case T-1/13 Advance Magazine Publishers v OHMI EU:T:2014:615 �� 59n286 Case T-12/13 Sherwin-Williams Sweden v OHMI EU:T:2014:1054��34n132, 91n105, 93n109 Case T-26/13 dm-drogerie markt v OHMI EU:T:2014:70�� 39n168 Case T-38/13 Pedro Group v OHMI EU:T:2014:241�� 151n103, 158n150 Case T-75/13 Boehringer Ingelheim Pharma v OHMI EU:T:2014:1017��110n35, 112n52, 113n57 Case T-76/13 Compagnie des montres Longines, Francillon v OHMI EU:T:2015:94��79 Case T-78/13 Red Bull v OHMI EU:T:2015:72�� 24n66 Case T-90/13 Herdade de S. Tiago II v OHMI EU:T:2014:778�� 54n256 Case T-122/13 Laboratoires Polive v OHMI EU:T:2014:863�� 39n168, 76 Case T-184/13 Skype v OHMI EU:T:2015:258��24n62, 150n90, 153n120, 155n129 Case T-227/13 Bayer Intellectual Property v OHMI EU:T:2015:120��24n64, 33n117, 46n196 Case T-254/13 Stayer Ibérica v OHMI EU:T:2015:362 ��119n109 Case T-262/13 Skysoft Computersysteme v OHMI EU:T:2014:884�24n63, 34n134, 119n103, 129n188 Case T-265/13 Polo/Lauren v OHMI EU:T:2014:779 �� 60n295 Case T-272/13 Max Mara Fashion Group v OHMI EU:T:2014:1020�� 34n139 Case T-282/13 Iglotex v OHMI EU:T:2015:226�� 34n131, 52n251 Case T-297/13 Junited Autoglas Deutschland v OHMI EU:T:2014:893�� 59n285 Case T-324/13 Endoceutics v OHMI EU:T:2014:672 ��24n60, 33n118, 181n107 Case T-333/13 Westermann Lernspielverlag v OHMI EU:T:2015:490�� 33n128 Case T-341/13 Groupe Léa Nature v OHMI EU:T:2014:802��74 Case T-350/13 Jordi Nogues v EUIPO EU:T:2017:633 �� 52n253, 82n59 Case T-384/13 Intermark v OHMI EU:T:2015:158 �� 73n33 Case T-388/13 Costa Crociere v OHMI EU:T:2015:118�� 119n101, 125n150 Case T-491/13 Perfetti Van Melle Benelux BV v OHIM, Intercontinental Great Brands LLC, EU:T:2015:979 ��202n231 Case T-514/13 AgriCapital v OHMI EU:T:2015:372��125n155 Case T-518/13 Future Enterprises Pte Ltd v EUIPO, McDonald’s EU:T:2016:389��195n195 Case T-521/13 Alpinestars Research v OHMI EU:T:2015:474�� 36n149 Case T-543/13 Three-N-Products v OHMI EU:T:2015:134�� 45n194 Case T-559/13 Giovanni Cosmetics v OHMI EU:T:2015:353�� 63n308 Case T-581/13 Royal County of Berkshire Polo Club v OHMI EU:T:2015:192��21–22n36 Case T-608/13 easyGroup IP Licensing v OHMI EU:T:2015:282�� 84n67 Case T-645/13 Nezi v OHIM EU:T:2016:145��126n165 Case T-657/13 BH Stores v OHMI EU:T:2015:449��109n30, 113n64, 116n79 Case T-665/13 Zitro IP v OHMI EU:T:2015:55 �� 90n98 Joined Cases T-711/13 and T-716/13 Harrys Pubar and Harry’s New York Bar v OHMI EU:T:2016:82�� 96n122, 120n114

Table of Cases xxi Case T-715/13 Lidl Stiftung v OHMI EU:T:2015:256 �� 62n304, 74, 120n114 Case T-717/13 Chair Entertainment Group v OHMI EU:T:2015:242��25n71, 27n80 Case T-102/14 Deutsche Post AG v OHIM, PostNL Holding BV EU:T:2015:279�� 202n229, 202n230 Case T-123/14 BSH v OHMI EU:T:2015:52 �� 58n274 Case T-145/14 adidas v OHMI EU:T:2015:303�� 28n87 Case T-169/14 Ferring BV v OHIM, Kora Corp. EU:T:2015:280�� 220n80 Case T-194/14 Bristol Global Co. Ltd v OHIM EU:T:2016:42 �� 22n37 Case T-197/14 La Zaragozana v OHMI EU:T:2015:313 �� 34n139 Case T-210/14 Mederer GmbH v OHIM, Cadbury International Holdings EU:T:2016:105 ��199n217 Case T-273/14 Lithomex v OHMI EU:T:2015:352�� 32n116, 118n100 Case T-351/14 Construlink -Tecnologias de Informação, SA v EUIPO, Wit-Software EU:T:2017:101 ��176n74, 180n98, 180n103, 185n134 Case T-352/14 The Smiley Company v OHMI EU:T:2015:491�� 32n115, 45n193, 120n114 Case T-369/14 Sequoia Capital operations v OHIM, Sequoia Capital, EU:T:2015:733�� 220n79 Case T-420/14 Wine in Black v OHMI EU:T:2015:312�� 36n157 Case T-485/14 Bon Net OOD v OHMI EU:T:2006:53. �� 98n128, 202n233 Case T-535/14 The Cookware Company Ltd v OHIM EU:T:2016:2 �� 20n22 Case T-541/14 Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl v OHIM EU:T:2016:51 �� 20n16, 49n232 Case T-549/14 Lidl Stiftung & Co. KG v EUIPO EU:T:2016:594�� 116–17, 116n80 Case T-554/14 Lionel Andrés Messi Cuccittini v EUIPO, JM. EV-e hijos, SRL EU:T:2018:230��169n39 Case T-557/14 BrandGroup GmbH v OHIM EU:T:2016:116�� 91n99 Case T-562/14 Yoo Holdings v OHMI EU:T:2015:363 �� 30n98, 122n128, 128n181 Case T-613/14 Industrias Tomás Morcillo, S.L. v EUIPO EU:T:2016:198�� 112n49 Case T-621/14 Infocit v OHMI EU:T:2015:427 ��34n130, 58n273, 59n284 Case T-687/14 Novomatic AG v OHIM EU:T:2016:37�� 113n63 Case T-745/14 TeamBank AG Nürnberg v EUIPO EU:T:2016:82�� 96n123, 199n216 Case T-785/14 El Corte Inglés, S.A v OHMI EU:T:2016:160 �� 34n133, 34n138 Case T-816/14 Tayto Group v OHMI EU:T:2016:93 �� 59n287 Case T-13/15 Deutsche Post AG v EUIPO, Media Logistik GmbH EU:T:2017:434��202n232 Case T-21/15 Franmax v EUIPO EU:T:2016:241�� 49n233 Case T-53/15 credentis AG v OHMI EU:T:2016:136�� 22n41 Case T-67/15 Polo Club v EUIPO, Lifestyle Equities EU:T:2016:657�� 163n11 Case T-75/15 Rod Leichtmetallräder GmbH v OHIM EU:T:2016:26��128n177 Case T-85/15 Alfa Wassermann SpA v EUIPO EU:T:2017:336�� 112n54, 132n207 Case T-99/15 Sfera Joven, S.A. v EUIPO EU:T:2016:321�� 34n139 Case T-225/15 QuaMa Quality Management GmbH v EUIPO, Microchip Technology, Inc EU:T:2017:10 ��199n216 Case T-228/15 Grupo de originación y análisis, S.L. v EUIPO EU:T:2016:530�� 90n93 Case T-250/15 Speciality Drinks Ltd v EUIPO EU:T:2016:678 �� 93n110, 180n102 Case T-312/15 Market Watch v EUIPO EU:T:2016:303 �� 36n150 Case T-358/15 Arrom Conseil v EUIPO EU:T:2016:490��102n158 Case T-399/15 Morgan & Morgan Srl International Insurance Brokers v EUIPO, Grupo Morgan EU:T:2018:192�� 171n48 Case T-407/15 Monster Energy v EUIPO, Hot-Can Intellectual Property, EU:T:2016:624 �� 179n91 Case T-408/15 Globo Comunicação e Participações S/A v EUIPO EU:T:2016:468�� 241n49 Case T-454/15 Laboratorios Ern, SA v EUIPO EU:T:2016:262 �� 111n45 Case T-457/15 Fakro sp. z o.o. v EUIPO EU:T:2017:391�� 78n47 Case T-461/15 Guccio Gucci SpA v EUIPO EU:T:2016:605�� 61n302 Case T-495/15 Sociedad agraria de transformación No.9982 Montecitrus v EUIPO, Spanish Oranges EU:T:2017:173 �� 179n95, 200n221 Case T-503/15 Aranynektár v EUIPO EU:T:2016:261�� 28n83 Case T-504/15 Rafhaelo Gutti, S.L. v EUIPO EU:T:2017:150�� 19n15 Case T-521/15 Diesel v EUIPO EU:T:2017:536 �� 65n317 Case T-537/15 Deutsche Post AG v EUIPO, Verbis Alfa sp. z o.o. EU:T:2018:384��202n229 Case T-538/15 Regent University v EUIPO, Regent’s College EU:T:2017:226 ��184n126

xxii Table of Cases Case T-568/15 Giuseppe Morgese, Pasquale Morgese, Felice D’Onofrio v EUIPO EU:T:2017:78��199n215 Case T-596/15 Batmore Capital Ltd v EUIPO, Univers Poche EU:T:2017:103��185n134 Case T-693/15 Clover Canyon v EUIPO, Kaipa Sportswear EU:T:2016:620�� 166n26 Case T-695/15 BMB sp v EUIPO Ferrero SpA EU:T:2017:684��235–36n22 Case T-701/15 Stock Polska sp. z o.o. v EUIPO EU:T:2017:16 ��180n101 Case T-768/15 RP Technik GmbH Profilsysteme v EUIPO EU:T:2017:630�� 180n97 Case T-18/16 Deutsche Post AG v EUIPO EU:T:2018:86�� 22n44 Case T-25/16 Haw Par v EUIPO EU:T:2017:303 �� 38n161 Case T-39/16 Nanu-Nana Joachim Hoepp v EUIPO EU:T:2017:263 ��121n119 Case T-88/16 Opko Ireland Global Holdings v EUIPO EU:T:2017:32 ��113, 113n61 Case T-113/16 Arctic Cat Inc v EUIPO EU:T:2018:43��59 Case T-118/16 Deutsche Post v EUIPO, bpost NV EU:T:2018:86��202n229 Case T-159/16 Metronia S.A. v EUIPO, Zitro EU:T:2017:340 ��199n217 Case T-184/16 NRJ Group v EUIPO EU:T:2017:703�� 150n87 Case T-202/16 Keturi kambariai v EUIPO EU:T:2017:750�� 20n16, 171n53 Case T-258/16 Mediterranean Premium Spirits, SL v EUIPO EU:T:2017:375�� 90n94 Case T-382/16 Asna v EUIPO (Asna Wings/Wings) EU:T:2017:713 �� 78n43 Case T-398/16 Starbucks v EUIPO EU:T:2018:4 ��76 Case T-406/16 Dogg Label v EUIPO EU:T:2017:482��120n115 Case T-448/16 Mr. Kebab s.r.o. v EUIPO, Mister Kebap SL EU:T:2017:459�� 199n215, 199n216 Case T-722/16 Mapei SpA v EUIPO, Steenfabrieken Vandersanden NV EU:T:2017:808�� 176n74 Case T‑824/16 Kiosked Oy Ab v EUIPO EU:T:2018:133�� 65n319 Case T-15/17 Dimitrios Mitrakos v EUIPO EU:T:2018:198�� 218n64 Case T-46/17 TDH Group v EUIPO, Comercial de Servicios Agrigan EU:T:2018:976��199n215 Case T-164/17 Apple and Pear Australia Ltd v EUIPO, Pink Lady America, EU:T:2018:678�� 178n85 Case T‑261/17 Bayer AG v EUIPO, Uni-Pharma EU:T:2018:710�� 182n114, 187n147 Case T-346/17 Hotelbeds Spain, SL v EUIPO EU:T:2018:134 �� 40n170 Case T‑668/17 Maico Holding GmbH v EUIPO, Eico A/S EU:T:2018:567�� 180n99 EUIPO BOARDS OF APPEAL R 519/2003-2, Tiffany & Co. v Emballages Mixtes et Plastique Sarl, 14 December 2004�� 106n13, 114n69 R 755/2009-4, Proxxon S.A v Franz Jost AG, 20 Oct 2010�� 246n76 R 0806/2009-4, Chocoladefabriken Lindt & Sprungli v Terravita, 9 Nov 2010�� 246n74 R 1877/2010-2, Absolut Company Aktiebolag v OHIM, Messe Commerzgroup Ltd, 17 Feb 2012�� 236n24, 246n71 R 2492/2010-2, Tea Forté, Inc v Dr. Dünner AG, 14 Feb 2012 �� 236n25 R 210/2012-1, Nemiroff Intellectual Property Establishment v BELVEDERE société anonyme, 5 Sep 2013�� 236n25, 249n90 R 1802/2012-1, Industrias Relax, S.A. V Relax Natürlich Wohnen GmbH, 5 Sep 2013��197n205 R 1462/2012-G, Lifestyle Supplies V.o.F. v Ultimate Nutrition, Inc., 18 Sep 2013�� 197n205, 197n206 R 1565/2016-1, Flow Festival Oy v Producciones Baltimore, S.L., 2 Mar 2017�� 165n20 R 2133/2017-4, Robert Birnecker v Fisher’s Gin Ltd, 3 Apr 2018��229n124 R 2254/2017-4 Bekaertdeslee Innovation v Home Relax, 1 Aug 2018��197n207 EUIPO Fabrimode NV v Robert Bosch GmbH, Opposition Division, No. B 2 783 002 (06/09/2017)�� 236n24, 247n78 Sun Stars & Sons v S.C. Carpathian Springs, Opposition Division, No. B 2 710 849 (22/12/2017)�� 236n23 Sun Stars & Sons Pte Ltd. v S.C. Valvis Holding, Opposition Dvision, No. B 2 710 807 (12/02/2018)�� 236n23 UNITED KINGDOM 32Red plc v WHG (International) Ltd [2011] EWHC 62 (Ch)��185n132 Adelphoi Ltd v DC Comics, Trade Marks Registry (Appointed Person), O/440/13�� 48n220

Table of Cases xxiii Alka9 Ltd v WP IP & Development BV, Trade Marks Registry (Appointed Person), O/342/14��98n129 Alterego Retail Group Ltd v Retail Royalty Company, Trade Marks Registry (Appointed Person), O/468/17�� 43n181 Alticor Inc v Nutrigreen Health Products Ltd, Trade Marks Registry (Appointed Person), O/335/07�� 84n68, 85 American Home Products Corporation v Knoll Atkiengesellschaft [2002] EWHC 828 (Ch)�� 54n258, 55 Apple Inc v Swatch AG, Trade Marks Registry, O/307/16��194n191 Apple Inc v Wapple.net Ltd, Trade Marks Registry (Appointed Person), O/277/13�� 22n43 Applied Energy Products Ltd v Hansgrohe AG, Trade Marks Registry (Appointed Person), O/090/06�� 57n269 APT Training & Consultancy Ltd & Anor v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) �� 4n14, 180n104 Argon Consulting & Management Ltd v JT International SA, Trade Marks Registry (Appointed Person), O/049/17�� 43n185 Argos Ltd v Argos Systems Ltd [2017] EWHC 231 (Ch)�� 181n105, 223n97 Ashley v Rado Uhren AG, Trade Marks Registry (Appointed Person), O/640/17�� 47n208 Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322 (Ch)�� 49n236, 126n162 Assos of Switzerland SA v Asos Plc [2013] EWHC 2831 (Ch) �� 171n52 Aveda Corp v Dabur India Ltd [2013] EWHC 589 (Ch)�� 99n133, 100, 100n137, 100n138 Awareness Ltd v Plymouth City Council, Trade Marks Registry (Appointed Person), O/236/13��110n40 Baker Street Clothing Ltd v La Chemise Lacoste SA, Trade Marks Registry (Appointed Person), O/333/10�� 41n178, 42–43, 45n192, 51–52, 51n243, 51n245, 51n246, 51n247 Balfour Beatty plc v PE International AD, Trade Marks Registry (Opposition), O/013/13�� 64n313 Barclays Bank plc v Rise Construction Management Ltd, Trade Marks Registry (Appointed Person), O/635/17�� 107n18 Bayerische Motoren Werke Aktiengesellschaft v Technosport London Ltd [2017] EWCA Civ 779�� 184n127, 192n180 Bon Catering Services v Aldi Stores, Trade Marks Registry (Appointed Person), O/411/14 �� 98n128 Bowerbank v Michele-Textil-Vertriebsgesellschaft mbH, Trade Marks Registry (Appointed Person), O/070/07�� 109n30, 124, 124n143 BP Amoco Plc v John Kelly Ltd [2002] FSR 5 (NICA)�� 193n185, 207, 207n11, 209, 247n82 Brewdog plc v ABG EPE IP LLC, Trade Marks Registry (Appointed Person), O/048/18��101n151 British Shorinji Kempo Federation’s Trade Mark Application [2014] EWHC 285 (Ch)�� 49n236, 60n299, 61 British Sky Broadcasting Group Plc & Ors v Microsoft Corporation & Anor [2013] EWHC 1826 (Ch)��49n230, 128n187, 189n161, 211n30 British Sugar plc v Robertson Ltd [1997] ETMR 118�� 106, 106n11, 106n14, 124, 124n140 Cachet Kids Ltd v Cath Kidson Ltd, Trade Marks Registry (Appointed Person), O/404/14�� 47n210 Chiemeka Eijochi v dm-drogerie markt GmbH + Co. KG, Trade Marks Registry (Appointed Person), O/058/18�� 22–23 Cobra Electronics Corporation v Cobra Automotive Technologies SpA, Trade Marks Registry (Opposition), O/380/10�� 38n161, 51n243 Coco de Mer Ltd v Chanel Ltd [2004] EWHC 992 (Ch) �� 59n292 Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2014] EWHC 185 (Ch)��79 Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41��7n35, 7n37, 166n27, 167n29, 168n37, 172n57, 184n128, 190n165 Cosmetic Warriors Limited and Lush Limited v Amazon.co.uk Limited and Amazon EU SARL [2014] EWHC 181 (Ch)��193n189 Cromwell Group (Holdings) Ltd v Rexel State Ltd, Trade Marks Registry (Appointed Person), O/023/13��123n139 D Jacobson & Sons Ltd v Globe Ltd [2008] EWHC 88 (Ch)��130, 130n199 Dallas Burston Healthcare Ltd v Boehringer Ingelheim KG, Trade Marks Registry (Appointed Person), O/048/01�� 21n31, 147n74

xxiv Table of Cases Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat)��167n31, 226, 226n109, 226n110, 227n113, 228n117 Dear Choo, Trade Marks Registry (Opposition), O/286/16�� 180n99 Decon Laboratories Ltd v Fred Baker Scientific Ltd [2000] EWHC 57 (Ch)�� 150n88 Deutsche Telekom AG v E! Entertainment Television Inc [2006] EWHC 33 (Ch) ��152n107 Digipos Store Solutions Group Ltd v Digi International Inc [2008] EWHC 3371 (Ch)��142n40, 146n62, 146n64 DKH Retail Ltd v Nadeem Anwar, Trade Marks Registry, O/522/17��229n123 Dreams Ltd v Pure Imports Ltd, Trade Marks Registry (Appointed Person), O/307/15�� 214n47 eBay, Inc v Dotcom Retail Ltd, Trade Marks Registry, O/347/14.��224n101 Ellerman Investments Ltd v C-Vanci [2006] EWHC 1442 (Ch)��153n110 Elliott v LRC Products Ltd, Trade Mark (Opposition), O/103/12 �� 57n270 Elliott v LRC Products Ltd, Trade Marks Registry (Appointed Person), O/255/13��203n238 Elliot v LRC Products Ltd, Trade Marks Registry (Appointed Person), O/223/15�� 110–11, 110n39, 117–18, 117n91, 127, 127n173, 128n182 Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch)��4n13, 30n93, 145n58, 150n87, 168n34, 177–78, 178n84, 179n90, 184n128, 192n178 Enterprise Rent-A-Car Company v Eurodrive Car Rental Ltd [2005] EWHC 1429 (Ch)�� 30, 30n91 esure Insurance v Direct Line Insurance plc [2008] EWCA Civ 842�� 186n140, 187n148 Evegate Publishing Limited v Newsquest Media (Southern) Limited [2013] EWHC 1975 (Ch)�� 49n236 Exxon Corporation v Kellogg Company, Trade Marks Registry (Appointed Person), O/373/04��122n128 Fenty & Ors v Arcadia Group Brands Ltd (t/a Topshop) [2013] EWHC 1945 (Ch)��186n138 FIL Ltd & Anor v Fidelis Underwriting Ltd [2018] EWHC 1097 (Pat) �� 179n93, 179n95 Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230 (Ch)��209n17, 211n30, 223n95 Fine & Country Ltd v Okotoks Ltd [2013] EWCA Civ 672�� 26n78, 27 Firm of ABX v Gurwitch Products LLC, Trade Marks Registry (Appointed Person), O/229/13��149n82, 149n84, 151n97 Frank Industries Pty Ltd v Nike Retail BV [2018] EWHC 1893 (Ch)�� 192n181, 193n188 Geolabs Limited v Geo Laboratories and Edwards [2012] EWPCC 45�� 50n239 Ghias (T/A Griller) v Ikram (T/A The Griller Original) & Ors [2012] EWPCC 3�� 76, 87n78, 211n30 Giant UK Limited v Major League Baseball Properties Inc., Trade Marks Registry (Appointed Person), O/264/14��124n142 Giorgio Armani SpA v Sunrich Clothing Ltd [2010] EWHC 2939 (Ch)�� 56n264 Grant v London Relocation Ltd, Trade Marks Registry, O/204/17��197n204 Green Flag Ltd v Groupama Insurance Company Ltd, Trade Marks Registry (Opposition), O/334/12�� 54n255 Hasbro Inc v 123 Nahrmittel GmbH [2011] EWHC 199 (Ch)�� 32n108, 32n109, 57n265, 170n45, 191n174 Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch)�� 5n26, 51, 51n245, 166n24, 174n66, 175–76, 176n72, 190n165 HFC Bank Plc v Midland Bank Plc [2000] FSR 176�� 223n97 Hornig v Distell Limited and J Sedgwick & Company Ltd, Trade Marks Registry (Invalidity), O/325/13�� 55n262 Hotel Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2008] EWHC 3032 (Ch)��10n52, 48n221 Infamous Nut Co Ltd v Percy Dalton (Holdings) Ltd [2003] RPC 7 �� 23n50 Imperial Group plc & Another v Philip Morris Limited & Another [1984] RPC 293 ��187n145 Interflora Inc & Anor v Marks and Spencer plc [2014] EWCA Civ 1403�� 167n32, 169n43, 170n44, 172n57, 173n59, 181n105, 211, 211n31, 213n37, 214n47, 215–16, 217n58 Interflora Inc & Anor v Marks and Spencer Plc & Anor [2013] EWHC 1291 (Ch)�� 169n42, 170n44, 174n67, 183n120, 187n151, 212n34

Table of Cases xxv Interflora Inc v Marks & Spencer Plc [2012] EWCA Civ 1501�� 184n127, 187n145, 187n149 Intersnack Knabber-Geback GmbH & Co KG v Chiquo Ltd, Trade Marks Registry (Appointed Person), O/95/14�� 20n20 IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439�� 184–85n130 Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch) �� 44, 44n188, 55, 55n259, 146n64, 149n80, 153n119, 171n52, 173n58, 174n62, 192–94, 193n187 Julius Sämaan Ltd v Tetrosyl Ltd [2006] EWHC 529 (Ch)��193n185 JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290��33n127, 184–85n130, 190n165 Kimberly-Clark Worldwide Inc v Multibrands International Ltd, Trade Marks Registry (Appointed Person), O/363/17��153n121 Knight v Beyond Properties Pty Ltd [2007] EWHC 1251 (Ch)�� 223n95 Kurt Geiger v A-List Corporate Ltd, Trade Marks Registry (Appointed Person), O/075/13��203n237 L.A. Sugar Ltd v Back Beat Inc, Trade Marks Registry (Appointed Person), O/375/10 �� 5, 5n24, 165–66, 166n22, 166n23 L’Oréal SA & Ors v Bellure NV & Ors [2006] EWHC 2355 (Ch) �� 206, 206n8 Land Securities plc’s Application, Trade Marks Registry (Appointed Person), O/339/04�� 49n226 Lewis v Client Connection Ltd [2011] EWHC 1627 (Ch)�� 138n21, 150n92, 153n113 Lifestyle Equities CV & Anor v Santa Monica Polo Club Ltd & Ors [2017] EWHC 3313 (Ch)�� 49n223, 55n261, 158n149 Liquid Plastics Ltd v Imperial Chemical Industries Plc, Trade Marks Registry (Appointed Person), O/272/07�� 32n113 London Taxi Corporation, The v Frazer Nash Research Ltd [2017] EWCA Civ 1729��175, 175n71, 177n80, 239n45 London Taxi Corporation, The v Frazer-Nash Research Ltd & Anor [2016] EWHC 52 (Ch)��177, 177n78, 236n26, 239, 239n43, 246n70 Lonsdale Sports Ltd v Erol [2013] EWHC 2956 (Pat) �� 50n237 Lowther v Formula One Licencing B.V., Trade Marks Registry (Appointed Person), O/396/14��141n36, 146 Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner Limited t/a Trespass [2019] EWHC 118 (IPEC)��193n188 Lunan Group Ltd v Edwin Co Ltd [2006] EWHC 3278�� 63n306 Maier v ASOS Plc [2015] EWCA Civ 220 ��9n45, 46n197, 58n279, 130, 130n197, 148n77, 153n117, 161n5, 171n50, 185n131 Martinez (t/a Prick) v Prick Me Baby One More Time Ltd [2018] EWHC 776 (IPEC)�� 223n97 Merck KGaA v Merck Sharp & Dohme Corp [2017] EWCA Civ 1834��192n180 Millenium Jeans v Zeco, Trade Marks Registry (Appointed Person), O/400/14�� 98n130 Mio Ottimo Jeans Officino Ltd v Ars Parfum Creation Consulting GmbH, Trade Marks Registry (Opposition), O/343/13�� 55n263 Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC)�� 223n97 N.V. Sumatra Tobacco Trading Co. v CTBAT International Co. Ltd, Trade Mark Registry (Opposition), O/005/18�� 61n301 Nature’s Gift International, Inc. v Merck Consumer Healthcare Ltd, Trade Marks Registry (Opposition), O/383/15�� 59n294, 76, 149n85 Neutrogena Corporation and Anr v Golden Limited and Anr [1996] RPC 473�� 223n95 Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch) �� 89n85, 182n113, 201n224 Noble Foods Ltd v McDonald’s International Property Co Ltd, Trade Marks Registry (Appointed Person), O/181/14�� 44n191, 45 Nomination Di Antonio E Paolo Gensini SNC & Anor v Brealey & Anor (t/a JSC Jewellery) [2019] EWHC 599 (IPEC)�� 4n14 Now Click 2 Eat Ltd v Kunnure, Trade Marks Registry (Appointed Person), O/485/17�� 43n181 O2 Holdings Ltd v Hutchison 3G Ltd [2006] EWCA Civ 1656��190n169 Oasis Stores Ltd’s Trade Mark Application [1998] RPC 631�� 27n82

xxvi Table of Cases Och-Ziff Management Europe Ltd & Anor v OCH Capital LLP & Ors [2010] EWHC 2599 (Ch)��145n57, 146n63, 149n81, 151n100, 152, 152n109, 153n118, 184n129, 192n182, 205, 205n6, 206, 207, 207n13, 208n14, 208n15, 208n16, 209n19, 211n27, 211n28, 211n29, 212, 219–20, 219n76, 221–22, 223–24, 223n96, 225n105 Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd [1946] 63 RPC 39��203n238 Oney Bank v Onesavings Bank plc, Trade Marks Registry, O/065/18�� 214n47 Oska’s Ltd v Morgan SA, Trade Marks Registry (Appointed Person), O/317/04 �� 142n39, 144n52, 149n79, 149n83, 150n94, 151n96, 151n99, 153n115 Pepsico, Inc v Teng Yun International Pte Ltd, Trade Marks Registry, O/134/18�� 223n97 Pfizer Ltd v Eurofood Link (UK) Ltd [2000] ETMR 896�� 113n58 Phones 4U Ltd v Phones4u.co.uk Internet Ltd [2006] EWCA Civ 244 ��185n132 Pia Hallstrom Ltd v Beale, Trade Marks Registry (Appointed Person), O/303/17�� 102n157, 203n235 Polo Lauren Co’s Trade Mark Application [2001] RPC 32��21–22n36 Powell v Turner [2013] EWHC 3242 (IPEC)�� 100–1, 100n139 Pramic Ltd v F Bender Ltd, Trade Marks Registry (Opposition), O/376/09�� 23, 23n53 Quad International Inc v Goldstar Publications Ltd [2003] EWHC 2081 (Ch)�� 21n24 R. v Johnstone [2003] UKHL 28; [2004] ETMR 2�� 237n33 Raj Foods Ltd v Masala World Ltd, Trade Marks Registry (Invalidity), O/019/08�� 49n226, 105n4 Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 �� 223n93 Red Bull GmbH v Stute Nahrungsmittelwerke GmbH & Co KG, Trade Marks Registry (Appointed Person), O/119/14�� 97n125 Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929 (Ch)��24n57, 31n106, 32n109, 192n184 Redd Solicitors LLP v Red Legal Ltd and Martin Crighton [2012] EWPCC 54 (PCC)��10n51, 57n266, 108n25 Reed Executive v Reed Business Information [2004] EWCA Civ 159�� 168n38, 189n158 Riviera Home Furnishings Pvt. Ltd v Riviera Holding B.V., Trade Marks Registry (Opposition), O/634/17��133n211 Roederer v J Garcia Carrion S.A. & Ors [2015] EWHC 2760 (Ch)��5n25, 166n23 Rousselon Freres et CIE v Horwood Homewares Ltd [2008] EWHC 881 (Ch)�� 98n131, 99 Royal Academy of Arts, The v Errea’ Sport SpA, Trade Mark Registry (Opposition), O/036/15�� 64n313 Saks Hair (Holdings) Ltd v The Little Wing Trading Company Ltd, Trade Marks Registry (Appointed Person), Application O/271/13 ��42–43, 42n179 Sarmad’s Trade Mark Application [2006] ETMR 2�� 41n175 S C Prodal 94 Srl v Spirits International NV [2003] EWHC 2756 (Ch)�� 58n278 Scentura Creations Ltd v Patrick Cox Ltd, Trade Marks Registry (Appointed Person), O/471/00��129n190 Schuh Limited v SHHH … Limited [2011] CSOH 123��130n196 Schütz (UK) Ltd v Delta Containers Ltd [2011] EWHC 1712 (Ch)�� 174n61, 174n66, 175, 175n69, 176, 177n77 Shanghai Commercial Bank Ltd v Groupement des Cartes Bancaires, Trade Marks Registry (Opposition), O/338/12�� 64n314 Sidhu-Robb v Nosh Beverages Ltd, Trade Marks Registry (Appointed Person), O/224/18 ��126n158 Sky Plc v Skykick UK Ltd [2018] EWHC 155 (Ch)�� 171n51, 192n177 Societe Anonyme des Bains de Mer et du Cercle des Etrangers a Monaco v Anglofile International Ltd (t/a Monte Carlo Casino Entertainment) [2013] EWPCC 38�� 41n177, 49n225, 153n111 Société Des Produits Nestlé SA v Cadbury UK Ltd [2012] EWHC 2637 (Ch)�� 233n9 Société Des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174�� 233n9 Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC) �� 49n234 Sölen Çikolata Gida Sanayi Ve Ticaret Anonim Sirketi v Growseed Aktiengesellschaft, Trade Marks Registry (Appointed Person), O/241/05�� 148n75 Soulcycle Inc v Matalan Ltd [2017] EWHC 496 (Ch)�� 170n45

Table of Cases xxvii Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch) ��4n15, 191n175 Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24��8–9, 8n43, 161n6, 172n57, 188n156, 189n160, 191n175, 192, 192n176, 192n183 Starbucks (HK) Ltd & Another v British Sky Broadcasting Group Plc & Others [2013] EWCA Civ 1465��196, 196n201 Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2015] UKSC 31��152n105 Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Others [2012] EWHC 1842 (Ch)�� 91, 91n100, 196n202, 197n203 Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch)��25n73, 145n55, 146n63, 146n66, 156n137, 156n138, 184–85n130 Sun Mark Ltd v Red Bull GmbH, Trade Marks Registry (Appointed Person), O/068/10�� 47n206, 59n293 Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch)88n84, 91, 91n102, 197n204, 210n25, 238n36 Talentcorp Pty Ltd v Kingsley, Trade Marks Registry (Appointed Person), O/389/17�� 47n209 Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch)�� 7, 7n36, 142n41, 155, 155n130, 167n28, 174, 174n64, 192n179, 192–94, 193n186 Thomson Holidays Ltd v Norwegian Cruise Line Ltd [2002] EWCA Civ 1828 ��125n151 Thornton & Ross Ltd v Strellson AG, Trade Marks Registry (Appointed Person), O/175/14�� 120n116, 126n166 Tictrac Ltd v United Digital Group GmbH, Trade Marks Registry (Appointed Person), O/223/18��80n52, 83n60 TORREMAR Trade Mark [2003] RPC 4�� 44n187 Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch)��128n186 Ukulele Orchestra of Great Britain, The v Clausen & Anor (t/a The United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) �� 49n224 Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd & Ors [2016] EWHC 2911 (Ch)��181n105, 184–85n130 Vitasoy International Holdings Ltd v Dairy Crest Ltd, Trade Marks Registry (Appointed Person), O/514/13�� 126n157, 128n180 W3 Ltd v Easygroup Ltd [2018] EWHC 7 (Ch)�� 192n177, 203n236 Walton v J & P Coats Ltd, Trade Marks Registry (Opposition), O/063/14 �� 51n244 Warnink (Erven) BV v Townend and Sons Ltd [1979] AC 731 (HL)�� 223n94 Waseem Ghias (t/a Griller) v Mohammed Ikram (t/a The Griller Original) and others. See Ghias (T/A Griller) v Ikram (T/A The Griller Original) & Ors Westwood v Knight [2011] EWPCC 8��28n86, 29, 30, 30n96, 53n254 Whirlpool Corporation & Ors v Kenwood Ltd [2008] EWHC 1930 (Ch)�� 187n148, 206–7, 206n9, 209, 236n26, 238–39, 238n39, 239n42, 248n84 Whyte and MacKay Ltd v Origin Wine UK Ltd & Anor [2015] EWHC 1271 (Ch)��5n25, 48n218, 91n103, 101n146, 141n36, 166n23, 203n235 Wilkinson v Erol, Trade Marks Registry (Opposition), O/101/14�� 37n160, 38 Winez Ltd’s Trade Mark Application [2006] ETMR 19�� 50n238 Winkworth Office Interiors Ltd v Winkworth Franchising Ltd, Trade Marks Registry (Appointed Person), O/163/14��129n189 Wistbray Ltd v Creative Nature Ltd [2005] EWHC 2072 (Ch)�� 126n161, 149n78, 150n91, 151n95, 153n116 AUSTRALIA Bing! Software v Bing Technologies and Another [2009] FCAFC 131 (Federal Court of Australia)�� 224n99 Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90��238, 238n37 Sebel Furniture Ltd v Acoustic & Felts Pty Ltd [2009] FCA 6�� 237n29 Southern Cross (1954) 91 CLR 592 �� 224n99

xxviii Table of Cases BELGIUM Kraft Foods Belgium v Natrajacali (27 Jan 2015) 2010/AR/3340 (Brussels Court of Appeal)��253n106 Levi Strauss & Co v BPC Amersfoort BV [2011] ETMR 32�� 30, 30n95 Mars Inc v Joseph Deters [2015] ETMR 14 (Commercial Court of Brussels)�� 246n72, 254n111 FINLAND Abloy v Hardware Group Finland (13 June 2017) Case KKO:2017:42 (Supreme Court of Finland); (2018) 4 GRUR Int 376��252n103 FRANCE Federation Internationale Des Logic v Go Voyages, OPP 11-2775/CJR and OPP 11-2776/CJR (INPI) France (28 Feb 2012)�� 247n80 Générale Biscuit Glico France, Mondelez France, Mondelez Europe v Solinest, Griesson De Beukelaer (2018) 1093 PIBD 302 (Paris Court of Appeal) �� 253n105, 254n112 W.H. Siliconform v Orvipesa Agromilk (11 March 2009) No. 07/04481 (Tribunal de Grande Instance Paris) �� 243n56 GERMANY Abschlussstück [2003] GRUR 332 (BGH) (Three dimensional mark consisting of the non-writing end of a pen)�� 236n27 Chancellor, Masters and Scholars of the University of Oxford, The v Fid Verlag Fachverlag Für Informationsdienste [2018] GRUR 79 (BGH)��202n232 Dentale Abformmasse (Dental impression material) [2005] GRUR 1044 (BGH)�� 242n52 Deutsche Telekom AG v Mobilcom [2004] ETMR 75 (BGH)�� 151n98, 234n17 Dreidimensionalen Marke für Schokoladenriegel – Bounty [2016] GRUR 197 (BGH)�� 241n50 DRILLISCH ALPHATEL Trade Mark Application [2009] ETMR 27��100n137 Farbmarke violettfarben BGH, 1 Mar 2001 (I ZB 57/98); [2001] GRUR 1154; (2003) 34(3) IIC 312�� 234n17 Farbe gelb (Yellow) [2010] GRUR 637 (BGH) �� 243n57 Farbmarkenverletzung I (Magenta) [2004] GRUR 151 (BGH); (2004) IIC 1050�� 245n64 Ferdinand Erbgraf Zu Castell Castell v Castel Frères (CASTELL) [2013] GRUR 68 (BGH)��201n223 Gelbe Wörterbücher (Langenscheidt Yellow) [2014] GRUR 1101; (2015) 46 IIC 372 (BGH) (the colour yellow for dictionaries) �� 128n183, 236n28, 244, 244n61 GOLDBÄREN/Gold Bears, 33O 803/11, 18 December 2012 (Regional Court of Cologne)�� 250n92 GOLDBÄREN/Gold Bears 6 U 230/12, 11 April 2014 (Higher Regional Court of Cologne) �� 250n92, 251n96 Goldbären I ZR 105/14, 23 Sep 2014 (BGH); also reported as HARIBO GmbH v Chocoladenfabriken Lindt & Sprüngli [2016] ETMR 23 (BGH)��189–90n164, 251n97, 251n98 Golden Rabbit Trade Mark [2007] ETMR 30 (BGH)�� 63n309, 248n86 Goldhase II [2011] GRUR 148 �� 249n89 Home Depot Inc v Bauhaus Landgericht (Hamburg) [2005] ETMR 63 �� 91n105 “Indorektal/Indohexal” BGH GRUR 1995, 50 �� 136n10 J.M. v DGBB (DSA Deutsche Sportmanagementakademie) [2016] GRUR 283��201n223 Langenscheidt v Rosetta Stone (Langenscheidt Yellow) [2015] GRUR 581; “Langenscheidt Yellow” (2015) 46(3) IIC 372��141n37, 244n59, 245n62, 245n63 Lila-Schokolade (Purple Chocolate) [2005] GRUR 427 (BGH)��243n56, 243n58, 245n62, 247n81 Lindt v Riegelein Confiserie [2012] GRUR-RR 255 (Higher Regional Court Frankfurt) �� 249n88, 253n105 Mag-Lite [2000] GRUR 888 (BGH) (Shape of torches)�� 236n27 Nivea-Blau [2015] GRUR 1012 (BGH)�� 243n53, 254n112 Nivea/Dove (19 Nov 2008) Case 5 U 148/07, OLG Hamburg�� 243n53, 245n62 Oldtimer [1971] GRUR 251 (BGH)�� 251n95

Table of Cases xxix Parfumflakons, Case 6 U 220/15 (17 Nov 2016) (Oberlandesgericht Frankfurt am Main)�� 249n89 Pjur Group Luxembourg [2012] GRUR 1040 (BGH) ��201n223 Pralinenform I (Shape of Confectionary) [2007] GRUR 780 (BGH)�� 240n48 Pralinenform II (Shape of Confectionary) [2010] GRUR 1103; [2011] ETMR 29(BGH)�� 240n48 Russisches Schaumgebäck (Russian meringues) [2005] GRUR 414 (BGH)�� 239n47 Southern Liqueur v O.M.I.H.B. (AMARULA) [2013] GRUR 631 (BGH)��201n223 Sparkassen-Rot/Santander-Rot [2015] GRUR 1201 (BGH)�� 243n54 “Springende Raubkatze” BGH GRUR Int 1996, 60�� 136n9 Tchibo/Rolex [1985] GRUR 876 (BGH) ��229n126 Tchibo/Rolex II [1993] GRUR 55 (BGH) ��229n126 TUC-Salzcracker [2008] GRUR 505 �� 249n89 “Wida” BGH GRUR 1952, 35 �� 136n10 Wörterbuch Gelb [2013] GRUR-RR 213 (OLG Köln)�� 245n62 Zwilling/Zweibrüder [2004] GRUR 779 (BGH)�� 251n95 IRELAND Allergan Inc v Ocean Healthcare Ltd [2008] IEHC 189; [2008] ETMR 72 �� 20n23 Bayerische Motorenwerke AG v Ronayne T/A BMWcare [2013] IEHC 612; [2014] ETMR 29�� 211n30 ITALY Cartier International v I. Negif, Rome court of first instance, 22 May 2017 (unreported) (replica Cartier watches)��229n126 F.S. and X.W. v Salvatore Ferragamo, Milan court of first instance, 12 July 2017 (unreported) (replica shoes incorporating Ferragamo’s 3D buckle mark)��229n126 Imperial v Luigi Auletta Alta Moda, 31 May 2017, Italian Supreme Court��202n232 Mondelez Italia, Générale Biscuit Glico France v Griesson de Beukelaer v Griesson de Beukelaer (26 June 2014) No. 27541/14 (Milan Tribunal of First Instance)��253n105 Salvatore Ferragamo v DC Brands International (9 May 2016) no. 5732/2016 (Milan Court of First Instance)��253n108 Salvatore Ferragamo v Virginia s.r.l & Ors. (24 May 2018) No. 1539/2018 (Firenze Court of First Instance) ��253n108 NETHERLANDS Revillon Chocolatier, Société Par Actions Simplifiée v Trianon Chocolatiers B.V. [2010] ETMR 16�� 237n31, 254n111 NORWAY Glaxosmithkline AS v Novartis, Sandoz, Case 16-019739ASD-BORG/03, Borgarting Court of Appeal, Norway (20 April 2017)�� 248n83 SPAIN Camper v Kiowamoda (18 April 2015) Appeal No 1621/2013 (Spanish Supreme Court)��253n107 Orange Personal Communications Ltd v Spain, Jazz Telecom S.A.U., Appeal No. 4301/2012, Supreme Court of Spain, 2 Dec 2013; (2014) 45(5) IIC 603 �� 233n9 SWITZERLAND “Red Bull v Bulldog” (2014) 45(8) IIC 989��43n183, 59n293, 143n44 “Red Cross” (2015) 46(1) IIC 142�� 29n89, 30, 30n97

xxx Table of Cases USA adidas-America, Inc. v Payless Shoesource, Inc. 546 F. Supp. 2d 1029 (D. Or. 2008)�� 217n61, 229n125 Adidas America, Inc. v Skechers USA, Inc. No. 16-35204, U.S. App. LEXIS 12249 (9th Cir. 2018)��229n125 Astra Pharm. Prods., Inc. v Beckman Instruments, Inc. 718 F.2d 1201 (1st Cir. 1983) �� 221n82 Brookfield Communications, Inc v West Coast Entertainment Corp 174 F 3d 1036 (9th Cir. 1999)�� 205n5 Gibson Guitar Corp. v Paul Reed Smith Guitars, LP 423 F.3d 539, 76 U.S.P.Q.2d 1372 (6th Cir. 2005), cert. denied, 126 S. Ct. 2355 (US 2006)�� 217n61 Grotian, Helfferich, Schulz, Th Steinweg Nachf v Steinway & Sons 523 F 2d 1331 (2d Cir. 1975) �� 208n14 KP Permanent, Inc v Lasting Impression Inc. 543 US 111 (2004) �� 10n49 Mobil Oil Corp v Pegasus Petroleum Corp 818 F 2d 254 (2d Cir. 1987). �� 208n14 Multi Time Machine v Amazon.com 804 F.3d 930 (9th Cir. 2015), superseding 792 F.3d 1070 (9th Cir. July 6, 2015)�� 214n44 Polaroid Corp. v Polarad Electronics Corp. 287 F.2d 492 (2d Cir. 1961)�� 107n17, 138n24 Smith v Walmart Stores 537 F. Supp. 2d 1302 (2008) (ND Georgia) ��187n148 Squirrel Brand Co. v Green Gables Investment Co. 223 U.S.P.Q. 154 (TTAB 1984)�� 51n248

1 Introduction The Likelihood of Confusion

1. The Traditional Rationale for Trade Mark Protection 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. When it comes to proving that two marks are sufficiently similar, the goods are similar enough and additional factors favour a likelihood of confusion, the extent to which there is detailed doctrinal guidance as well as the extent to which there are unresolved issues remains underestimated. Our aim in this work is to provide some clarity in this neglected area. At various points in the following chapters, we ask whether certain factors within the confusion test have taken on a life of their own. They might be applied in a manner which is formalistic, or operate as a heuristic shortcut in one context, making them inappropriate to apply in a different context. Alternatively the doctrinal development of one factor may pull in a different direction from the logic underlying other factors. Before we start though, in the rest of this chapter we will provide some background about what likelihood of confusion is, where it fits within the wider trade mark system, and what the future holds for confusion.

2. Causes of Action under the Relative Grounds and Infringement 2.1 The Causes of Action Likelihood of confusion forms part of a framework of causes of action under the European trade mark scheme, designed to protect the holders of earlier trade marks.

2 Introduction: The Likelihood of Confusion This cause of action can be used in a number of circumstances: as the basis of an infringement claim to protect the exclusive use of the proprietor’s mark,1 in order to refuse2 or oppose3 an application to register a conflicting mark, or to invalidate a conflicting mark that has been wrongly registered.4 The confusion test is itself one of three causes of action which protect a trade mark proprietor’s interests:5 (i) Where both the senior and junior marks, and the senior and junior goods are identical. On the wording of the legislation, no form of harm to the trade mark or its owner is required, though the Court of Justice of the European Union’s (CJEU) jurisprudence has added a requirement that there be harm to one of the functions of the senior mark.6 (ii) Where the senior and junior marks are identical or similar; where the senior or junior goods are identical or similar; and as a result of these two similarities, there is a likelihood of confusion between the junior and senior marks. It should be noted that the CJEU has held that confusion is more likely where the senior mark has a higher level of inherent or acquired distinctiveness.7 All trade marks must be sufficiently distinctive—in the sense of possessing the ability to indicate origin—to be registered but beyond that, some trade marks may have greater ‘strength’ or enhanced distinctiveness, which makes confusion more likely (see Chapter 3). (iii) Where the senior mark has a reputation; the senior and junior marks are identical or similar, and the use of the junior mark is without due cause and would cause either detriment to the distinctive character or repute of the senior mark, or would take unfair advantage of the senior mark. This family of claims, often collectively referred to as ‘dilution’, is premised on the basis that a non-confusing mental link or association between two marks may nevertheless be wrongful.8 The wrongs can be separated out into two forms of harm and one advantage: (a) detrimental to distinctiveness or blurring, (b) detrimental to repute or tarnishment, and (c) taking unfair advantage or free riding. Initially many believed that these causes of action formed a hierarchy of protection, with the first action—often referred to as ‘double identity’ infringement—offering the most expansive protection (because on the literal wording, no showing of harm

1 Art 10(2)(b) of Directive (EU) 2015/2436/EU of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast) [2015] OJ L 336/1 (hereafter TMD 2015). 2 Arts 5(1)(b) and 31(1) TMD 2015. 3 Arts 5(1)(b) and 43(1) TMD 2015. 4 Arts 5(1)(b) and 45(3)(b) TMD 2015. 5 Arts 5(1)–(3)(a) and 10(2) TMD 2015. 6 Case C-206/01 Arsenal Football Club plc v Reed EU:C:2002:651, [51]. See generally L. Porangaba, ‘A Contextual Account of the Trade Mark Functions Theory’ [2018] Intellectual Property Quarterly 230. 7 Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport (CJEU) EU:C:1997:528, [24]. 8 See generally I. Simon Fhima, Trade Mark Dilution in Europe and the United States (OUP, 2011); D. Bereskin (ed), International Trade Mark Dilution (Thomson Reuters, 2019).

the Relative Grounds and Infringement 3 to the senior mark was required) and the third action—also referred to as ‘dilution’— providing the most targeted protection (because it was, on its literal wording, reserved for situations where the goods where dissimilar). However, given that the CJEU has qualified the protection offered in the first situation,9 by requiring harm to the functions of a mark, and removed the requirement that the goods be dissimilar for the third situation,10 this is no longer a safe assumption. This work is concerned with the second cause of action: likelihood of confusion, and the similarities that contribute to its existence. This is not to say that there cannot be an overlap between the three causes of action. For example, a likelihood of confusion could amount to a specific form of unfair advantage under the third section. The creation of confusion which leads to sales for the defendant at the cost of the claimant constitutes the advantage, while misleading customers provides the unfairness element. Perhaps the most frequent overlap that will arise though is between the first and second situations. If the parties’ signs and goods are close enough to be considered under the first situation, but ultimately don’t satisfy its requirements, there is a good chance that they will be highly similar, and so the next logical step is to consider them under the likelihood of confusion action. Equally, the second situation, likelihood of confusion, can arise when the respective signs and goods are either similar or identical. Identity of marks and signs are both requirements of the first situation. Identity of marks has been interpreted strictly, so that it is limited to situations where the two parties’ marks are practically identical, or feature differences so small that they would go unnoticed by the average consumer.11 The rationale for the strict approach was that it was essential to limit the wide protection offered by the first situation.12 Thus, it would seem likely that a similarly strict approach should be taken with the identity of the goods. Given that the same wording has been used in the legislation pertaining to both the first and second situations, it seems likely that ‘identity’ should be interpreted in the same way in both situations. Since the meaning of ‘identity’ is well documented, and since marks that fall just the wrong side of the identity/similarity boundary will be considered under the similar test, this work limits itself to a detailed consideration of similarity of signs and goods.

2.2 Other Background Conditions for Infringement Where the likelihood of confusion test is being deployed in an infringement context, there are certain additional background conditions that must also be met.

9 Arsenal Football Club plc v Reed (n 6), [51]; Case C-245/02 Anheuser-Busch Inc v Budĕjovický Budvar np EU:C:2004:717, [59]; Case C-48/05 Adam Opel AG v Autec AG EU:C:2007:55, [21]; Case C-487/07 L’Oréal SA v Bellure NV EU:C:2009:378, [58]; Joined Cases C-236/08, 238/08 & C-237/08 Google France Sarl v Louis Vuitton Malletier (CJEU) EU:C:2010:159, [77]; Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günther Guni and trekking.at Reisen GmbH EU:C:2010:163, [31]; Case C-323/09 Interflora Inc and another v Marks and Spencer plc EU:C:2011:604, [38]. 10 Case C-292/00 Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd EU:C:2003:9, [17]–[30]. 11 Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA EU:C:2003:169, [54]. 12 Ibid, [50].

4 Introduction: The Likelihood of Confusion Arnold J (as he then was)13 has summarised the requirements for likelihood of confusion as: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public.

The first three are important preconditions and if one of them is not satisfied, there will be no liability.14 It should also be clarified that in order to infringe, there is no requirement for knowledge, intention, or the defendant having copied the claimant’s mark.15 Subjectively innocent infringement is prohibited.

2.3 Defences While the defences to trade mark infringement are outside the scope of this book, it should be noted that, in any infringement case, the defences can potentially play an important role in counterbalancing an overly-strict application of the infringement provisions. The defences cover use of one’s own (personal) name or address, descriptive use, or referential use to identify the trade mark owner’s own goods.16 These defences though are subject to a proviso requiring the junior use to be ‘in accordance with honest practices in industrial and commercial matters’.17 Since the CJEU has suggested that use which indicates a link between the junior and senior uses cannot be honest, questions have been asked about how realistic it is to rely on the defences in certain confusion cases.18 The provisions of the Misleading and Comparative Advertising Directive (MCAD),19 designed (in theory at least)20 to enable comparative advertising to take place, should also be remembered.

13 Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch), [112]. 14 Google France (n 9), (use for the purposes of infringement requires use in a defendant’s own commercial communication, such that ‘internal’ uses with a search engine indexing system are not uses at all). For recent applications, see: Nomination Di Antonio E Paolo Gensini SNC & Anor v Brealey & Anor (t/a JSC Jewellery) [2019] EWHC 599 (IPEC) (Finding use in relation to goods and services for the purposes of distinguishing); APT Training & Consultancy Ltd & Anor v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) (Finding use in the course of trade). 15 Case C-119/10 Frisdranken Industrie Winters BV v Red Bull GmbH (AGO) ECLI:EU:C:2011:258, [43] (AG Kokott); Specsavers International Healthcare Ltd v Asda Stores [2010] EWHC 2035 (Ch), [95] (Mann J). 16 Arts 14(1)(a)–(c) TMD 2015. 17 Art 14(2) TMD 2015. 18 I. Fhima, ‘The Public Interest in European Trade Mark Law’ [2017] Intellectual Property Quarterly 311, 322–4. 19 Directive 2006/114/EC of 12 December 2006 concerning misleading and comparative advertising (repealing Directive 97/55/EC) [2006] OJ L 376/21. 20 Though see the circular interpretation of the CJEU in L’Oreal (n 9).

The Meaning of Confusion 5

3. The Meaning of Confusion Likelihood of confusion has been defined by the CJEU as ‘where the public can be mistaken as to the origin of the goods or services in question’.21 This includes the ‘classic’ diversion of trade scenario, where consumers mistake the junior goods for the goods of the senior mark holder. However, in recognition of changing business practices, where single companies will exert quality control over a range of goods, and where goods may be produced by a looser affiliation of companies under common control, it also includes the situation where there is a mistaken belief on the part of consumers that the goods come ‘from the same undertaking or, as the case may be, from economically- linked undertakings’22 The CJEU has explicitly linked the likelihood of confusion test to the essential function of a trade mark, noting that the essential function is: to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality.23

The breadth of potential confusion has been made particularly clear in the UK. In L.A. Sugar, Mr Purvis QC, sitting as Appointed Person, explained that confusion can be either ‘direct’, in the sense that the consumer mistakes the junior mark for the senior mark, or ‘indirect’, in the sense that the consumer is aware that the junior mark is different from the senior mark, but because of the similarity between the two sets of marks and goods, erroneously believes the junior mark to be a brand extension of the senior mark.24 The Appointed Person identifies three situations25 when this would be particularly likely: • Where the junior mark reproduces a particularly distinctive element of the senior mark, for example, use of TESCO in the junior sign 26 RED TESCO. • Where the addition in the junior mark is very weakly distinctive, for example, LITE. • Where the junior mark is a logical variant of the senior mark. In addition to brand extensions, indirect confusion may also be found where there is a mistake belief on the part of the average consumer that the junior goods are merchandise, licenced by the senior mark holder.26 21 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (CJEU) EU:C:1998:442, [64]. 22 Ibid, [70]. 23 Ibid, [28]. 24 L.A. Sugar Ltd v Back Beat Inc, Trade Marks Registry (Appointed Person), O/375/10, [16]. 25 Ibid, [17]. The language of ‘direct’ and ‘indirect’ confusion can in fact be found in SABEL (n 7), [16]–[17], but without explanation as to what it means. The L.A. Sugar formulation was cited approvingly in Whyte and MacKay Ltd v Origin Wine UK Ltd & Anor [2015] EWHC 1271 (Ch), [42]. See also, Roederer v J Garcia Carrion S.A. & Ors [2015] EWHC 2760 (Ch), [65] (indirect confusion because CRISTALINO wine will be seen as an ‘offshoot’ of CRISTAL). 26 See, e.g., Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch), [150]–[162].

6 Introduction: The Likelihood of Confusion Confusion as to something other than commercial origin is not actionable under registered trade mark law (though it may be so under Member States’ unfair competition laws). Thus, in Canon, confusion as to where the goods were made, rather than who made them was not actionable.27 There is perhaps a slight softening as to the rigid approach to confusion apparent from the CJEU’s case law on ‘double identity’ in the Internet context. As has been briefly touched on, the CJEU has qualified the scope of this provision in the infringement context to situations where the junior use has harmed one of the functions of the mark. Harm to the functions includes harm to the function of indicating origin. The most direct example of harm to the ability of a mark to indicate origin is by causing confusion (because it can no longer reliably distinguish between different actors’ goods). In defining confusion where the junior user had made use of the senior mark as an advertising keyword, the CJEU modified the confusion test in Google France, asking whether the resultant advertisement: does not enable normally informed and reasonably attentive internet users, or enable them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party [emphasis added].28

In BergSpechte, this was applied by analogy to likelihood of confusion cases in the Internet context.29 It remains to be seen whether this modified standard will be applied outside the Internet context and we return to this issue in Chapter 7. What is clear is that mere association, in terms of being reminded of the senior mark, does not amount to actionable confusion. It is true to say that the wording of the relevant provisions of the Directive are not a model of clarity in this respect since they state: ‘the likelihood of confusion includes the likelihood of association between the sign and the trade mark’. One might assume therefore that association alone could be classed as confusion. Indeed, this was the case under the pre-harmonisation Benelux trade mark legislation, on which many assumed that the European trade mark legislation was modelled.30 However, this interpretation was rejected by the CJEU in SABEL v Puma, which held that ‘the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope. The terms of the provision itself exclude its application where there is no likelihood of confusion on the part of the public’.31 This (arguably strained) explanation suggests that the reference to association was inserted as a reminder that association will be one of the ingredients of confusion since consumers cannot confuse a senior and junior mark unless the latter reminds them of the former, but does not act as an alternative to confusion. An attempt was

27 Canon (n 21), [29].

28 Google France (n 9), [84]. 29 BergSpechte (n 9), [41].

30 SABEL (n 7), [14]–[17]. 31 Ibid, [18].

The Meaning of Confusion 7 made post-SABEL to argue that, confusion could be presumed if the senior mark had a reputation and association was shown to be present, but this came to naught.32 Confusion generally occurs in the situation where, because of a similarity of marks and of goods and services, consumers mistake the junior mark for the claimant’s. However, it not need be so limited, and both the wording of the Directive33 and the CJEU in Canon34 speak about a likelihood of confusion without specifying its exact parameters. Thus, courts in the UK have confirmed that ‘wrong way round confusion’, where consumers mistake the senior user’s offering for that of the junior user is actionable.35 Such cases tend to be the exception rather than the rule because factually, for such a mistake to be made, the junior mark will need a stronger reputation than that of the senior user. Frequently, this occurs where the senior user is an established smaller (in relative terms) undertaking which has been trading and has registered its trade marks in the UK, while the junior user has a substantial business overseas with spillover reputation in the UK, but is a new entrant to the UK market. For example, in Thomas Pink,36 the senior user, Thomas Pink had thirty-five shops selling upmarket men’s clothing in the UK. Likely confusion was found when the junior user, a subsidiary of the US-based Victoria’s Secret chain, sought to open a chain of ladies’ clothing shops named PINK. Similarly, it was found that the broadcast in the UK of the musical comedy series GLEE would be confused with the business of the senior mark-holder, a pre-existing comedy club with four branches in the UK, named THE GLEE CLUB. The confusion in question was that consumers would believe that the senior comedy clubs (which marketed themselves as independent) were spin-offs, or somehow related to the very prominent television series.37 The United States has gone a step further. Its broad definition of confusion is not limited to origin and includes: affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.38

The breadth of what confusion can be about in the USA has been roundly condemned by Lemley and McKenna.39 They document the transition from marks indicating trade origin to a belief that the trade mark owner has guaranteed the quality of the goods (even if he did not make them himself) to the present where a mistaken belief as to a mere business relationship between the trade mark owner and the product owner with no belief 32 E.g., Case C-425/98 Marca Mode CV v Adidas AG (CJEU) EU:C:2000:339, [33]. 33 Arts 5(1)(b) and 10(2) TMD 2015. 34 Canon (n 21), [26]–[29]. 35 See particularly the discussion in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41, [75]–[84]. 36 Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch), [159]. 37 Comic Enterprises v Twentieth Century Fox (n 35), [85]–[106]. 38 Lanham Act, s.43(a). 39 M. A. Lemley and M. McKenna, ‘Irrelevant Confusion’ (2010) 62 Stanford Law Review 413.

8 Introduction: The Likelihood of Confusion that there is a relationship between the trade mark owner and the defendant’s goods is actionable.40 The vice that they identify in this expansion is that it grants a cause of action in situations where the wrongful belief does not actually impact on consumer purchasing decisions. In particular, they identify research that shows that confusion as to sponsorship does not translate into any form of belief about that quality of the sponsored goods.41 They also identify a range of costs that result from an overwide definition of confusion, including the risk of undertakings that did not previously clash because their goods are so different from being caught, to the fact that such a definition of confusion is self-perpetuating: if consumers are taught that sponsorship must be authorised then they will come to believe that every use of coinciding brands, or featuring of a branded product in, say, a television show involves the approval of the trade mark owner. There are also risks to free speech as parody cases are frequently caught within the definition because some consumers may wrongly believe that the reference to a trade mark in the parody must be that the trade mark owner must have allowed it to be used.42 It is submitted that we are still some way from the situation identified by Lemley and McKenna in the EU. At least in relation to confusion-based infringement, goods or services must be similar, limiting the possibility for an action based on the argument that consumers wrongly believe that a senior mark holder has sponsored his name into a wholly different area. Caution is needed though: this argument falls away if trade mark owners register their marks across a wide range of goods and services, as is becoming increasingly common. Even if such registrations may become vulnerable to challenge for non-use, they may have a chilling effect on Small and Medium-sized Enterprises (SMEs) who may not have the legal knowledge or resources to embark on a revocation action. Also, there is a slow attack on the idea that confusion must be material to the purchasing decision in arguments drawn from pre-sale confusion and the idea inherent in Internet cases that is sufficient is consumers had ‘cause to wonder’ about the origin of the goods, rather than being definitively confused. This issue— whether speculative or fleeting confusion should be recognised as sufficient to ground a claim—is considered in detail in Chapter 7, where both initial interest and post-sale confusion are assessed.

4. A Global Appreciation The CJEU made it clear from the outset that likelihood of confusion must be judged globally,43 in the sense that all of the factors which contribute to consumer perception of confusion, that is how similar the marks are, how similar the goods are, how distinctive the elements of the marks are etc. must be viewed in the round, rather than being treated as a checklist. This is an attractive approach as it implicitly seeks to capture the

40 Ibid, 427. 41 Ibid, 430. 42

Ibid, 439–45.

43 SABEL (n 7), [22]; Canon (n 21), [16].

A Global Appreciation 9 holistic way in which consumers make purchasing decisions, considering all the perceptible information before them, but processing it at a subconscious level. In terms of how this holistic approach can be captured in practice, courts in the UK have sought to set out a summary, initially developed by the Hearing Officers of the Trade Marks Registry, given the imprimatur of the Court of Appeal in Specsavers,44 but added to in Maier v ASOS,45 from which this extract is taken: a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.

44 Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [51]–[52]. 45 Maier v ASOS Plc [2015] EWCA Civ 220, [75]–[76].

10 Introduction: The Likelihood of Confusion To this should be added the further guidance provided by the Court of Justice in Canon46 that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.

5. The Differences Between the Relative Grounds and Infringement Analysis The likelihood of confusion test as applied under relative grounds of analysis is more abstract, when compared to the test as applied in an infringement scenario, where the actual context of use can be considered. This distinction is developed in Chapter 6, Section 7. Another important different between relative grounds and infringement situations is that in an infringement case, a defence may be available in appropriate circumstances. It should be noted, though, that there is an inherent tension between the defences and the definition of infringement. To rely on a defence, a junior user’s use must be ‘in accordance with honest practices in industrial and commercial matters’. The CJEU has stated that junior use will not be honest where ‘it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner’.47 By definition, use which is confusing will create such a connection. This raises the absurd prospect that the defences may never be available in confusion cases.48 This point has not been tackled head-on by the courts,49 though in Celine, the CJEU rephrased the test so that: in assessing whether the condition of honest practice is satisfied, account must be taken first of the extent to which the use of the third party’s name is understood by the relevant public, or at least a significant section of that public, as indicating a link between the third party’s goods or services and the trade-mark proprietor or a person authorised to use the trade mark, and secondly of the extent to which the third party ought to have been aware of that.50

This suggests at least a Nelsonian knowledge standard on the part of the junior user, and UK cases where lack of honest practices have been found have highlighted situations where the junior user did not conduct a trade mark search in advance of embarking on the use of the infringing mark51 and/or turned a blind eye to evidence of confusion on the part of its customers.52

46 Canon (n 21), [29]. 47 Case C-228/03 The Gillette Company and Gillette Group Finland Oy v LA-Laboratories Ltd Oy EU:C:2005:177, [49]. 48 I. Simon, ‘Nominative Uses and Honest Practices in Industrial and Commercial Matters—a Very European History’ [2007] Intellectual Property Quarterly 117. 49 Although a similar point has been considered by the US Supreme Court in KP Permanent, Inc v Lasting Impression Inc 543 US 111 (2004). 50 Case C-17/06 Céline SARL v Céline SA EU:C:2007:497, [34]. 51 Redd Solicitors LLP v Red Legal Ltd and Martin Crighton [2012] EWPCC 54 (PCC). 52 Hotel Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2008] EWHC 3032 (Ch).

The Future of Confusion 11 Finally, one difference that is not so much between infringement and registrability as between the practice of different registries. The European Union Intellectual Property Office (EUIPO) Boards of Appeal will routinely consider whether the marks are similar before turning to whether the goods are similar. The UKIPO works the other way around and compares goods before signs. It is submitted, based on having analysed a substantial number of cases from both tribunals, that considering marks first makes a finding of confusion more likely. 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.

6. The Future of Confusion While this book is concerned with the state of the law as it is, or as it ought to be, it is worth setting out some speculative thoughts on what the future holds for the likelihood of confusion test. The role of confusion in the European trade mark framework (and indeed, worldwide) is well established. Thus, we do not foresee major changes to the legal framework in general. Instead, we anticipate developments in three specific areas: the relevance of empirical assessments of confusion; the extent to which psychology should inform trade mark law; and the use of artificial intelligence as well as machine learning. Empirical analysis of trade mark law offers us the opportunity to identify trends relating to how the relevant factors in relation to any particular legal test work in practice, by analysing large numbers of actual decisions which evaluate and apply those factors.53 A common methodology would be to identify the relevant factors, and then to read through the cases, coding for each one whether or not the factor has been used and to what effect. The resultant dataset is entered into specialist software which will identify trends, and the confidence level in those trends based on the relevant data and recognised inferential statistical techniques. Pioneering work in this area was conducted by Barton Beebe54 in the USA, who studied District Court decisions over a five-year period. The USA operates a multifactor test, under which no one factor is essential for a finding of likelihood of confusion. However, Beebe’s research found that in practice, similarity of marks was dispositive in the sense that confusion was not found in the absence of similarity of marks, and proximity of goods was nearly dispositive. One of the authors of this work has conducted a similar empirical analysis of the decisions of the General Court in Europe.55 Significant findings were that the distinctiveness of the

53 M. A. Hall and R. F. Wright, ‘Systematic Content Analysis of Judicial Opinions’ (2008) 96 California Law Review 63. 54 B. Beebe, ‘An Empirical Study of the Multifactor Tests for Trademark Infringement’ (2006) 94 California Law Review 1581. 55 I. Fhima and C. Denvir, ‘An Empirical Analysis of the Likelihood of Confusion Factors in European Trade Mark Law’ (2015) 46 IIC 310.

12 Introduction: The Likelihood of Confusion senior mark had very little if any bearing on the outcome of cases and that the similarity of goods factors were frequently not considered separately, and that certain similarity of goods sub-factors were barely considered at all. Additionally, visual similarity of marks played the greatest role in assessing similarity of marks. Empirical analysis considers the ‘bigger picture’, identifying trends or patterns. Consequently, we would not expect it to determine or necessarily be cited in any particular case. However, where there is a disjunct between how a tribunal assumes the test operates, and how empirical studies of the application show that the test works in practice, this could be a tool for helping registries and courts to reflect on whether the test is in need of reform. Another ‘bigger picture’ critique of trade mark law can be found in studies which employ psychological (experimental) methods to assess consumer responses. The confusion test makes various assumptions about how consumers perceive and interpret trade marks, while these assumptions have been drawn from common sense and judicial intuition. A recent trend has been for these assumptions to be measured against the psychological literature on brand perception. There have been a number of such studies in the USA,56 but fewer considering the EU case law. Some studies have considered the extent to which the average consumer in EU trade mark law is notional or hypothetical, which provides the opportunity to reconcile the interests of trade mark proprietors, consumers, and competitors while sustaining efficiently functioning markets.57 More recently, Kimberlee Weatherall has pointed out the differences between trade mark law’s construction of the average consumer and the manner in which psychologists assess actual consumer responses.58 Research indicates that real world consumers are often not particularly attentive, with other demands being made on their attention while shopping. While the notional average consumer is deemed to see a mark based on imperfect recollection of the mark as registered, in the real world consumers will have a view of a mark based on many other factors. She also identifies a lack of clarity as to whether mistaken purchases arise from fully formed beliefs. This is particularly problematic because judges often call for survey evidence based on the hypothetical trade mark law consumer, even though psychology shows that such a person may not exist.59 Weatherall rejects a wholesale remodelling of trade mark law to take these concerns into account as unrealistic and undesirable. Instead she proposes two options: (i) better and more creatively constructed survey evidence; and (ii) expert evidence 56 M. McKenna, ‘A Consumer Decision-Making Theory of Trademark Law’ (2012) 98 Virginia Law Review 67; T. Lee, G. Christensen, and E. DeRosia, ‘Trademarks, Consumer Psychology, and the Sophisticated Consumer’ (2008) 57 Emory Law Journal 575; J. Jacoby, ‘The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism, Fame, Confusion and Dilution’ (2001) 91 The Trademark Reporter 1013; R. Tushnet, ‘Gone in Sixty Milliseconds: Trademark Law and Cognitive Science’ (2008) 86 Texas Law Review 507; J. Sheff, ‘The (Boundedly) Rational Basis of Trademark Liability’ (2007) 15 Texas Intellectual Property Law Journal 331. 57 J. Davis, ‘Locating the Average Consumer: His Judicial Origins, Intellectual Influences and Current Role in European Trade Mark Law’ [2005] Intellectual Property Quarterly 183; J. Davis, ‘Revisiting the Average Consumer: An Uncertain Presence in Trade Mark Law’ [2015] Intellectual Property Quarterly 15; G. Dinwoodie and D. Gangjee, ‘The Image of the Consumer in European Trade Mark Law’ in D. Leczykiewicz and S. Weatherill (eds), The Image(s) of the Consumer in EU Law (Hart Publishing, 2015). 58 K. Weatherall, ‘The Consumer as the Empirical Measure of Trade Mark Law’ (2017) 80(1) Modern Law Review 57, 73–8. 59 Ibid, 80.

The Future of Confusion 13 that ‘draws upon the research literature to aid the court’s understanding of consumer decision-making and responses to particular kinds of stimuli’ and expert input into the creation of work manuals for trade mark offices at the registrability stage.60 Drawing on insights from psychology and the cognitive sciences would assist registries and courts at a higher level of abstraction—developing an ‘average consumer’ model which is deemed to process information in a manner which more closely aligns with scientific disciplines empirically assessing actual consumer perception and cognitive abilities.61 Another trend that we predict is increased use of artificial intelligence, and in particular, machine learning,62 in detecting the likelihood of confusion. This is already happening to some extent. Both the EUIPO63 and World Intellectual Property Organization (WIPO)64 have trade mark image searches powered by machine learning. A limited number of national offices are using machine learning in both image searches and in suggesting goods and services specifications. Australia has gone further in developing a programme that integrates a combination of both similarity of goods and of marks.65 Anecdotally, it appears that commercial search companies are also making use of machine learning. Machine learning, where the computer learns itself from analysing previous data and so does not need to be programmed, offers the prospect of a number of opportunities for users of the trade mark system. A computer program that detects similarities and differences between trade marks and sets of goods based on analysis of prior determinations of similarity and confusion promises a cost-effective way to power searches by registries and commercial search companies. It may also be able to provide adjudications, particularly in high-volume opposition registration decisions. For this to happen, we would need a high level of confidence in the results. This is particularly true if the machine learning is to be used judicially or quasi-judicially. Machine learning has not reached this level yet. Trade mark law is a particularly demanding field. Marks can be made up of words, images, 3-D representations, and other artefacts. Analysing all of these different phenomena would draw on different scientific sub- disciplines. For example, computer vision would be needed to image and compare two 3-D signs, whereas natural language processing might be used to detect the semantic content of a word mark. Even this would be insufficient because the multifactor comparison assesses how each mark looks, what it means and how it sounds. Additionally, similarity of goods and the reputation of earlier mark would need to be added to the equation. 60 Ibid,  82–6. 61 R. Burrell and K. Weatherall, ‘Towards a New Relationship Between Trade Mark Law and Psychology’ (2018) 71 Current Legal Problems 87. 62 For a brief introduction to machine learning see E. Alpaydin, Machine Learning: The New AI (The MIT Press, 2016). 63 The EUIPO’s database may be searched via ESEARCH PLUS, which is accessed at . This search platform incorporates a ‘deep learning algorithm’ to facilitate image mark searching, see

accessed 23 July 2019. 64 The WIPO Global Brand Database is found at: accessed 23 July 2019. 65 The use of AI generally by WIPO and intellectual property offices globally is documented in ‘Meeting of Intellectual Property Offices (IPOS) on ICT Strategies and Artificial Intelligence (AI) for IP Administration’ WIPO/IP/ITAI/GE/18/1 of 8 February 2018, available at accessed 23 July  2019.

14 Introduction: The Likelihood of Confusion It is not clear that the technology is presently up to the challenge. To take an example, inputting the image of a LEGO brick taken from the Lego Juris case66 into the EUIPO’s eSearch plus image search returns other images of LEGO and similar bricks. However, an image of the brick on its side gives a rectangular box of biscuits as its top result. This is merely an image comparison, without adding the additional layer of complication that comes with the analysis of similar goods. It is early days though, and as the technology improves, the authors can see an increasing role for machine learning in determining likelihood of confusion. For this to happen, two challenges will need to be overcome. In order to obtain reliable results, the computer program needs to learn from a sizeable dataset. Despite the fact that there are now thousands of post-harmonisation trade mark registry decisions on confusion, this is seen as relatively modest by machine learning standards. A further issue is that one of the attractions of machine learning is that computers process information free from a national doctrinal bias (continuing to apply elements of a pre-harmonisation approach to (say) survey evidence) or quirks of language that sometimes characterise trade mark disputes. However, given that machines learn from pre-existing decisions, these prejudices may work their way back in to the system.67

7. An Outline of the Book Likelihood of confusion can be a controversial subject. On the one hand it is highly intuitive—we are all consumers and we have all been confused. However, explaining how we get to the point where we are confused is less easy. We should clarify at the outset that this work does not tell readers definitively how and when confusion will be found. Indeed, this would be an impossible task. Whether confusion will be likely is intensely fact-specific, application specific (opposition or infringement) and depends on the institutional setting (court or registry; EUIPO or national registrar). In any one case, there are a broad range of highly calibrated, interrelated factors pertaining to how similar the goods are, how similar the marks are, the degree of distinctiveness of the earlier mark, and a range of other factors that must be weighed together in a multifactor test. This multifactor test attempts to reproduce the holistic approach that consumers are presumed to adopt (but seldom articulate) in the actual marketplace. Instead, our aim in this work is to cast light on the many factors that contribute to the multifactor global appreciation test for likelihood of confusion. It is our contention that, far from being opaque, it is possible to articulate a clear set of rules that are being consistently applied by European courts and tribunals in order to analyse the difference forms of similarity, and confusion overall. While sometimes there may appear to be a degree of contradiction between some of the factors, this is inevitable in the real world, where in some situations some factors will point towards confusion, and some against and 66 Case C-48/09 P Lego Juris v OHIM EU:C:2010:516. 67 See, e.g., A. Caliskan, J. Bryson, and A. Narayanan, ‘Semantics Derived Automatically from Language Corpora Contains Human-like Biases’ (2017) 356 Science 183.

A Word about Nomenclature 15 the impact of any one factor on the analysis may depend on the strength of another. However certain sub-factors may have been developed within their own silos of application. It would be helpful to bring them into conversation with the rest of the test and recognise the existence of these silos so that a finding very specific to (say) sub-brand confusion (in the clothing sector, consumers may think the junior user is a brand extension of the senior mark) are not misapplied in other contexts. This book is divided into seven further chapters. Following on from this introductory chapter, Chapter 2 details the various tests in relation to the similarity of marks (such as visual, aural, or conceptual similarity) while Chapter 3 considers the special case of complex or composite marks, consisting of different elements such as words and images. Should words be given greater importance than images or vice versa? Chapter 4 analyses the relevant factors when assessing the similarity of goods while Chapter 5 evaluates the extent to which the distinctiveness or strength of the senior mark influences this analysis. Having considered the first two major limbs of the test—similarity of marks and similarity of goods or services—Chapter 6 considers the third limb; it identifies the factors relevant for assessing whether confusion is causatively likely to flow from these similarities. For instance, a highly sophisticated consumer of financial services may not be easily confused, notwithstanding some degree of similarity between marks and financial products. Chapter 7 continues to explore the confusion factor by assessing the basis for two controversial variations of the test: initial interest (or pre-sale) confusion and post-sale confusion. It argues that the labels may be unhelpful and we ought to focus on the materiality of confusion –will the defendant’s conduct cause meaningful harm in the marketplace? Chapter 8 rounds off this volume by mapping some relatively unexplored terrain. It assesses how the conventional test is modified and applied to conflicts between non-conventional signs, such as two colours or two shapes. Over the course of these chapters, our focus is on European case law. We have drawn heavily on the jurisprudence of the CJEU (for obvious reasons) including that of the General Court (given the sheer volume of confusion cases considered on appeal from decisions of the EUIPO). As UK-based authors, we have also considered cases from England and Wales. This is particularly true in relation to infringement (as opposed to registrability) where there is relatively less European-level case law, since the EUIPO only considers registrability issues. Where appropriate, we have included the case law of certain EU Member States. This was particularly true of non-traditional marks, where decisions are relatively few and far between. Where required the authors commissioned translations of key cases but we are aware that there will have been inevitable omissions. Readers are encouraged to contact the authors and let us know which relevant cases from other EU members ought to be included in subsequent editions.

8. A Word about Nomenclature Trade mark law is regulated by an initially bewildering framework of legislation. At the national level, Member States have their own national trade mark legislation. In

16 Introduction: The Likelihood of Confusion the case of the UK, this is the Trade Marks Act 1994. This implements the EU’s Trade Mark Directive, which has an original version,68 an updated version69 and a Recast version70 making certain targeted substantive changes while also changing the numbering of all of the provisions. The purpose of the Directive was to harmonise the more important aspects of national approaches to trade mark law within the EU. Additionally, pan-national European trade marks are governed by a Regulation, which has also gone through three versions since inception.71 The Regulation grants a unitary right which covers all EU Member States and can be enforced across the single market. Thus both (largely harmonised) national regimes and the pan-European trade mark regime co- exist. The most recent round of revisions to the Regulation has resulted in the renaming of the Office for the Harmonisation of the Internal Market (or ‘OHIM’) to the European Union Intellectual Property Office (or ‘EUIPO’), while Community Trade Marks (or ‘CTMs’) are now EU trade marks (or ‘EUTMs’). Mercifully, in relation to confusion, the substantive content of the various legal instruments is the same, and it is only the numbering that differs. References in this work will be to the most recent Recast Directive, the TMD 2015, except where indicated otherwise. A table of equivalences is provided at the start of the book. A few final points on terminology, intended to assist the reader, are set out here. • References to ‘goods’ should be taken to include ‘goods and services’ unless specified otherwise. In the following pages, ‘products’ is also used as an umbrella term, to include both ‘goods and services’. • While many conflicts requiring confusion to be assessed revolve around two registered trade marks, or a registered trade mark and a proposed mark whose application is being opposed, in infringement situations the proprietor will be asserting their mark against a defendant’s (potentially unregistered) sign. We have followed this convention—mark versus mark or mark versus sign—in this book. • We have also followed the established convention of using ‘trade mark’ for UK and EU sources and ‘trademark’ for US ones.

68 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [1989] OJ L 40/1. 69 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks [2008] OJ L 299/25. 70 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast) [2015] OJ L 336/1. The TMD 2015 did not repeal TMD 2008 until 15 January 2019. 71 Council Regulation (EC) 40/94 of 20 December 1993 on the Community trade mark [1994] OJ L 11/1 as amended by Council Regulation (EC) 207/2009 of 26 February 2009 on the Community Trade Marks [2009] OJ L 78/1, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 [2015] OJ L 341/21, repealed by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification) [2017] OJ L 154/1 for European Union Trade Marks (hereafter EUTMR) took effect from 1 October 2017.

2 Similarity of Marks 1. Overview 1.1 The Test 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,1 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.2 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.3 The court also noted that average consumers tend to view marks as a whole, rather than dividing them into their constituent elements.4 This test was restated in Lloyd, where the CJEU also noted that the average consumer, through whose eyes the assessment is made, will be reasonably well-informed, observant, and circumspect.5 However, this average consumer is likely to suffer from ‘imperfect recollection’ of the earlier mark, as he rarely has the chance to compare the two marks side-by-side.6 Moreover, his level of attention will vary, depending on the type of goods or services being purchased.7 Because similarity of marks is appreciated globally, there is no set standard of the degree to which the marks must be aurally, visually, or conceptually similar and indeed, the importance of each element in any given case will depend on the type of goods being purchased (as is discussed below).8 However, it should be noted that in the relatively rare situation9 when there is no similarity between the marks whatsoever, the case will not proceed further.10 1 The marks must be literally identical or have differences so small that they would go unnoticed by the average consumer, Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA EU:C:2003:169. 2 Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport (CJEU) EU:C:1997:528, [23]. 3 Case C-408/01 Adidas v Fitnessworld EU:C:2003:404, [43]. 4 Ibid. 5 Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV EU:C:1999:323. 6 Ibid, [26]. 7 Ibid. 8 Ibid. 9 Rare because if few trade mark owners would pursue a case without some degree of similarity of marks. 10 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (CJEU) EU:C:1998:442. The Confusion Test in European Trade Mark Law. Ilanah Fhima and Dev S. Gangjee, Oxford University Press (2019). © Ilanah Fhima and Dev S. Gangjee 2019 DOI: 10.1093/oso/9780199674336.003.0002

18 Similarity of Marks In keeping with the global appreciation approach, the analysis of visual, phonetic, and conceptual similarity is not a binary ‘yes/no’ test. Tribunals tend to reach an interim finding on each factor as to whether it has a low/weak, average/medium, or high degree of similarity. This balances a (somewhat) systematic approach with a need to have nuanced data to feed in to the multifactor comparison of overall similarity of marks, and ultimately, likelihood of confusion. In a sense, the test for similarity of marks is deceptively simple. The basic principles have remained stable since the late 1990s. However, what is required in practice for marks to be considered similar is mired in uncertainty. In particular, the identification of the distinctive and dominant components of marks and how the dominant elements can be compared has been considered opaque at best and contradictory at worst. The next two chapters aim to eliminate at least some of that uncertainty by systematically analysing how the courts and tribunals have used the conceptual tools established by the CJEU to determine whether marks are similar.

1.2 Similarity for Confusion and for Dilution Compared The CJEU has confirmed that, while the tools used for making the comparison of visual, aural, and conceptual similarity are the same, the standard for similarity of marks is higher for confusion-based infringement than for dilution.11 This is because the former requires similarity that leads to confusion, while for the latter, it is enough that the similarity merely gives rise to association (although the harm to or unfair advantage of distinctiveness or reputation must follow from that association).12 Thus, although the European Union Intellectual Property Office (EUIPO) Board of Appeal had found that the signs in Figure 2.1 were not similar for the purposes of Article 8(1)(b) of the European Union trade mark (EUTM) Regulation, they could be similar for the purposes of establishing unfair advantage under Article 8(5):

Figure 2.1 Senior marks (left); junior marks (right)

11 Case T-480/12 Coca-Cola Company v OHMI EU:T:2014:1062, [32]. 12 Case C-552/09 P Ferrero SpA v OHIM EU:C:2011:177, [53]–[54]; Case C-603/14 P El Corte Inglés v OHIM EU:C:2015:807, [39]–[42].

Overview 19 However, the court cautioned that, under both forms of infringement, at least a minimum degree of similarity of marks is required.

1.3 Aural, Visual, or Conceptual Similarity—Which is Most Important? In setting out the test for comparing marks, the CJEU did not suggest a hierarchy between aural, visual, and conceptual similarity, suggesting that, on a legal level at least, they are all of equal importance.13 However, this does not mean that they need to be present in equal measure. Similarity of signs is assessed using a global appreciation approach, meaning that, just like in the overall global appreciation of confusion, a low level of one factor can be compensated for if one or more of the other factors militates strongly in favour of confusion. Indeed, in Lloyd, the CJEU allowed for the possibility that similarity of marks can be found where just one indicator of similarity (in that case, aural similarity) is present. The precise weight to be given to each element is very much dependent on the nature of the marks and the context in which the purchasing decision is made and so it is impossible to generalise about how much weight should be put on the respective aural, visual, and conceptual elements. Attempts to argue that Lloyd is the authority for the proposition that aural similarity automatically means that the marks are similar have been consistently rejected.14 Moreover, the assessment of confusion is driven by consumer perception. Therefore, in practice, where one element is more prominent in the consumer’s decision whether to purchase the goods or services, particular importance will be placed on this element. For example, the General Court (GC) has consistently held that because clothing is generally chosen visually, either in a store, or through a catalogue, in such cases, the visual comparison of the two signs will play a particularly important role in the global comparison of the two signs.15 This is so even where a shop assistant assists with the purchasing decision since the consumer will still have a chance to examine the goods visually before making the purchasing decision. Similarly, drinks are often ordered orally in pubs and bars and so, in such cases, the aural aspect of the mark is of particular

13 Although, in other writing (I. Fhima and C. Denvir, ‘An Empirical Analysis of the Likelihood of Confusion Factors in European Trade Mark Law’ (2015) 46(3) IIC 310), one of the authors has observed that visual similarity is most frequently present in cases where marks were found to be similar, and also where there was confusion overall. This may suggest that on a subconscious level, courts are finding the visual aspect of marks most persuasive, although it should also be noted that almost all marks have a visual aspect, but not all marks have phonetic or conceptual qualities, meaning that in a significant number of cases, the aural and conceptual comparisons do not even take place. See also Chiemeka Eijochi v dm-drogerie markt GmbH + Co KG, Trade Marks Registry (Appointed Person), O/058/18, [26], warning against a hard and fast rule regarding the relative importance of conceptual similarity. 14 See, e.g., Case C-206/04 P Mülhens v OHIM EU:C:2006:194, [21] and Case T-500/10 Dorma v OHIM EU:T:2011:679, [61]. 15 See, e.g., Case T-88/05 Quelle AG v OHMI EU:T:2007:45, [69]; Case T-504/15 Rafhaelo Gutti, S.L. v EUIPO EU:T:2017:150, [60].

20 Similarity of Marks importance. For example, in Mystery Drinks,16 the GC found that MYSTERY with a device for non-alcoholic drinks was similar to MIXERY for beer and beverages containing beer. Although the marks had only a slight degree of visual similarity, and no conceptual similarity, aurally the marks were similar. Since the drinks in question would be ordered orally, the aural similarity outweighed the visual and conceptual differences between the marks. The analysis is a nuanced one, with the courts willing to look at the precise circumstances of the cases before them, rather than generalising about consumer attitudes to different types of goods. Thus, in a number of other cases involving alcoholic drinks,17 the GC has declined to follow Mystery Drinks in placing primary importance on the aural element since the drinks before it would be most likely bought in shops, rather than bars and consumed at home, meaning that consumers would have the opportunity to make a visual comparison of the parties’ marks. Additionally, just because goods are sometimes ordered in noisy bars where the aural aspect of marks may be distorted, it cannot be assumed that this will always be the case, and primary attention must be paid to the normal marketing conditions of goods.18

1.4 Extra Weight to the Beginnings of Signs . . . In line with their assumptions about how consumers perceive marks, the courts have taken the approach that particular attention should be paid to shared beginnings of marks. This though is a general principle, rather than a hard-and-fast rule and in certain circumstances, there may be reasons why marks which have the same initial letters are not similar. Likewise, there are a significant number of marks which have been found to be similar in spite of having different beginnings. Similarity of marks has been found in cases where three initial letters are the same. For example, KREMEZIN was found to be similar to KRENOSIN19 and CHIQUO and CHIO20 were similar, despite quite different endings. There are more examples of cases where four letters are shared, including CLOROX and CLORALEX, 21 VITAVIT, and VITA+VERDE22and BOTOX and BOTONIA.23 The shared first four letters meant

16 Case T-99/01 Mystery Drinks GmbH v OHIM EU:T:2003:7, [48]. See also Case T-541/14 Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl v OHIM EU:T:2016:51; [48] (phonetic aspect particularly important for wine). Analogously, in choosing a restaurant or cafe, consumers will often refer to its name in speech, and so the phonetic aspect is particularly important, see Case T-202/16 Keturi kambariai v EUIPO EU:T:2017:750, [138]. 17 See, e.g., Joined Cases T-350/04 to T-352/04 Bitburger Brauerei v OHIM EU:T:2006:330, [112] and Case T- 472/08 Companhia Muller de Bebdias v OHIM EU:T:2010:347, [106]—in this case the GC noted that where the drink in question (cachaça) was consumed in bars, it would be as an ingredient of a cocktail, and so consumers would not in fact ask for the goods in question at all. 18 Case T-523/12 Rani Refreshments v OHMI EU:T:2014:571, [43]. 19 Case T-487/08 Kureha Corp v OHIM EU:T:2010:237, [83]. 20 Intersnack Knabber-Geback GmbH & Co KG v Chiquo Ltd, Trade Marks Registry (Appointed Person), O/95/ 14, [14]. 21 Case C-422/12 P Industrias Alen v The Clorox Company EU:C:2014:57, [55], upholding Case T-135/11 Clorox v OHMI EU:T:2012:356. 22 Case T-535/14 The Cookware Company Ltd v OHIM EU:T:2016:2. 23 Allergan Inc v Ocean Healthcare Ltd [2008] IEHC 189; [2008] ETMR 72, [29].

Overview 21 SCORE and SCORCH were similar,24 despite the fact that both have different commonly understood conceptual elements. OYSTER and OYSTRA (both with different figurative elements) were found to be similar, with the GC pointing to the fact that no English word other than ‘oyster’ began with the letters ‘oyst’.25 Another phenomenon involves a case where the junior mark includes the entirety of the verbal element of the senior mark plus an additional element, often as one word. Examples include AVANZ and AVANZELENE,26 PEPE and PEPEQUILLO,27 BURGER v BURGERBRAU,28 and IMPULSO and IMPULSO CREADOR.29

1.5 . . .But Not Always It should be remembered though that similarity of marks is always analysed on a case- by-case basis, and there is no concrete rule that three, or even four, identical letters at the beginning of a mark guarantees similarity. This is particularly so where the shared element has a descriptive or otherwise common aspect. For example, RNActive and RNAifect were dissimilar.30 The RNA element was of little distinctive character, which meant consumers would pay more attention to the different endings. DUOVENT and DUONEBS were also not confusingly similar since the shared DUO prefix was at least quasi-descriptive, meaning that the different suffix was determinative.31 The final letters dominated the two signs McKENZIE and McKINLEY because consumers were used to seeing Scottish surnames beginning Mc.32 Similarity, the (different) final letters dominated the signs CASTELLANI and CASTELLUCA.33 The concept of a castle was common in the market for wine (the goods in question), which meant consumers would pay little attention to the shared CASTELL element.34 Conversely, where the initial non-shared element is descriptive or heavily suggestive, then marks have been found to be similar, based on the similar second elements. For example, ACNO FOCUS and FOCUS were similar.35 The POLO element of U.S. POLO ASSN. was dominant because of the geographically descriptive nature of the term ‘US’, paving the way for that mark to be similar to POLO-POLO.36

24 Quad International Inc v Goldstar Publications Ltd [2003] EWHC 2081 (Ch), [16]. 25 Case T-437/09 Oyster Cosmetics SpA v OHIM EU:T:2011:23, [50]. 26 Case T-477/08 Mundipharm v OHIM EU:T:2010:72, [34]. 27 Case T-580/08 PJ Hungary v OHIM EU:T:2011:227, [46]–[48]. 28 Case T-460/11 Scandic Distilleries v OHMI EU:T:2012:432, [39]. 29 Case T-529/11 Evonik Industries v OHIM EU:T:2012:598, [27] and [30]. 30 Case T-80/08 CureVac GmbH v OHIM EU:T:2009:416. 31 Dallas Burston Healthcare Ltd v Boehringer Ingelheim KG, Trade Mark, Trade Marks Registry (Appointed Person), O/048/01 (DUONEBS). 32 Case T-502/07 Intersport International Corp GmbH v OHIM EU:T:2011:223. 33 Case T-149/06 Castellani SpA v OHIM EU:T:2007:350. 34 Ibid, [53]–[54]. 35 Case T-466/08 Lancome Parfums et Beaute & Cie v OHIM EU:T:2011:182. 36 Case T-228/09 United States Polo Association v OHMI EU:T:2011:170, [45], upheld in Case C-327/11 P EU:C:2012:550. See analogously Case T-581/13 Royal County of Berkshire Polo Club v OHMI EU:T:2015:192, [66], upheld in Case C-278/15 P Royal County of Berkshire Polo Club v OHIM EU:C:2016:20. Though it should be noted

22 Similarity of Marks AEROSTONE was similar to STONE in part because of the relationship between AERO and air.37

1.6 Different Initial Letter—Shared Everything Else Although the general trend is for particular importance to be placed on the beginnings of signs, there are a significant number of decisions finding similarity where only the first one or two letters differ, and the rest of the sign is the same. Examples include GITANA and KITANA,38 HALDER and ALDER,39 XENTEO and PENTEO,40 EURODONT and CURODONT,41 and SNICKERS and KICKERS.42 This outcome though is far from inevitable: APPLE and WAPPLE were not similar,43 nor were ePOST and BEPOST,44 and MARS and NARS45 were found to only have a low degree of similarity. What appears to unite these three cases is that one of the marks in question had a known meaning while the other did not, presumably causing consumers to notice the difference between the two.

1.7 Families of Marks The fact that the senior mark is part of a ‘family’ of associated marks may be taken into account in assessing confusion since consumers may believe that a similar junior mark is another member of the ‘family’.46 For this to occur, the relevant members of the ‘family’ must have actually been used.47 If the senior marks are not present on the market, consumers will have no reason to associate the junior mark with the senior marks because they will not know about the senior marks.48 In order for a senior user to raise a ‘family that other cases have found that ‘polo’ is itself descriptive—see Polo Lauren Co’s Trade Mark Application [2001] RPC 32 (POLO and ROYAL BERKSHIRE POLO). 37 Case T-194/14 Bristol Global Co Ltd v OHIM EU:T:2016:42, [66]. 38 Case T-569/11 Gitana v OHIM EU:T:2013:462. 39 Case T-209/09 Alder Capital Ltd v OHIM EU:T:2011:169. 40 Case T-585/10 Aitic Penteo v OHMI EU:T:2012:251. 41 Case T-53/15 credentis AG v OHMI EU:T:2016:136. 42 Case T-537/11 Hultafors Group v OHMI EU:T:2013:207. 43 Apple Inc v Wapple.net Ltd, Trade Marks Registry (Appointed Person), O/277/13. 44 Case T-18/16 Deutsche Post AG v EUIPO EU:T:2018:86, [81]. 45 Quelle AG v OHMI (n 15). 46 Case T-194/03 Il Ponte Finanziaria v OHMI EU:T:2006:65, [63]–[64]. The marks in question were BRIDGE (junior mark) and figurative signs ‘Bridge’, ‘Old Bridge’, ‘The Bridge Basket’, the word sign ‘THE BRIDGE’, the three- dimensional signs ‘The Bridge’ and ‘The Bridge’, the word sign ‘FOOTBRIDGE’, the figurative sign ‘The Bridge Wayfarer’ and, the word signs ‘OVER THE BRIDGE’ and ‘THE BRIDGE’ (senior marks). Indeed, in Case T-303/06 UniCredito Italiano v OHMI EU:T:2010:160, the General Court’s failure to assess whether the senior mark was part of a family of marks containing the prefix ‘uni’ lead in part to the annulment of its decision in Case C-317/10 P Union Investment Privatfonds v UniCredito Italiano EU:C:2011:405, [60], although ultimately on remand, in Case T-303/06 RENV UniCredit v OHMI EU:T:2014:988, [93]–[102], the General Court concluded that there was no family of marks. 47 Even though marks generally do not need to be used within the first years of their registration. 48 Il Ponte v OHMI (n 46), [64].

Visual Similarity 23 of marks’ argument, it will have to formally base its opposition on the group of marks which are members of the ‘family’, rather than basing the opposition on a single mark and seeking to introduce evidence of other similar marks which it owns during the proceedings.49 Similarly, tribunals have rejected the ‘grouping together’ of several earlier marks during opposition, unless the senior user has provided evidence that an element of the earlier mark ‘has enhanced distinctiveness in the eyes of the public because it is common to a family of marks’.50 Conversely, a group of marks which shared the common element ROCK was held not to be a family because the ‘rock’ element was descriptive or laudatory for building materials.51 Moreover, it will need to be shown that the junior mark has characteristics which render if capable of being erroneously seen as one of the series.52 An example of a senior user successfully relying on its family of marks to help in establishing confusion is Pramic v Bender, where the senior use of DEMI-MATE, MULTI-MATE, SUPER-MATE, and MIDI MATE for serviettes and table napkins defeated the junior application for TWIN-MATE for various paper goods.53

2. Visual Similarity 2.1 Words When assessing the visual similarity of word marks, tribunals tend to focus on:

• The number of shared or differing letters. • The order that the letters are in. • The positioning of any different or shared elements.54 • The structure of the two signs more generally.

In the spirit of global appreciation, these sub-factors are treated as being interrelated, with the final decision on visual similarity dependent on the interaction between them. To give some examples: • SEROSTIM and SEROSLIM were visually similar55 as they shared seven of their eight letters and both different central letters (T and L) were characterised by a vertical line. 49 Case C-16/06 P Les Éditions Albert René Sarl v OHIM EU:C:2008:739, [101]. 50 Infamous Nut Co Ltd v Percy Dalton (Holdings) Ltd [2003] RPC 7, [35]–[37]. 51 Case T-436/12 Deutsche Rockwool Mineralwoll v OHMI EU:T:2015:477, [81]. The marks in question were MASTERROCK, FIXROCK, FLEXIROCK, COVERROCK, and CEILROCK. 52 Case T-356/12 Debonair Trading Internacional v OHMI EU:T:2014:178, [20], upheld, Case C-270/14 P Debonair Trading Internacional v OHIM EU:C:2015:688, where the junior mark SÔ:UNIC did not fit the pattern of the earlier marks (SO . . . ?, SO . . . ? ONE, SO . . . ? CHIC), all of which featured an ellipse followed by a question mark. 53 Pramic Ltd v F Bender Ltd, Trade Marks Registry (Opposition), O/376/09. 54 Although marks which are ‘mirror images’ or inversions of each other can be similar, see Case T-331/08 REWE-Zentral v OHIM EU:T:2010:23 (SOLFRUTTA v FRUITISOL). 55 Case T-201/08 Market Watch v OHMI EU:T:2010:408 (SEROSTIM v SEROSLIM).

24 Similarity of Marks • COMIT and COMET56 and BULLIT and BULLET57 were visually similar on account of having only one letter different. • L112 and L.114 were similar.58 They were almost identical in length, and had almost the same structure, characterised by the letter L and a three-digit number starting with two number ones. • MEDINETTE and MESILETTE had an ‘average’ degree of visual similarity;59 favouring similarity, both consisted of a single word with four syllables and had the same number of letters, seven of which were identical, had their vowels in the same order and had the same initial and final elements; however, the difference between the central letters was described as ‘noteworthy’. • FEMIBION and FEMIVIA were visually similar to an average degree because the first four and the sixth letters were identical.60 • E-PLEX and EPILEX had an ‘average’ degree of visual similarity;61 again the lengths were almost the same and the marks the majority of their letters in common in the same order and had the same beginnings and endings; here though, the presence of the hyphen in one mark, but not the other, caused some differentiation. • SKY and SKYPE had a ‘moderate’ level of visual similarity because they shared three-fifths of their letters.62 • SKY and SKYSOFT were visually similar to an average degree because the initial element was identical and dominant, since some consumers would see ‘soft’ as descriptive of software in the context.63 • INTERFACE and INTERFOG were visually similar on account of having almost the same number of letters, the first six of which were shared and where in the same order.64 • Various marks consisting of the term CITI, followed by another term (e.g. CITICORP, CITIBANK, CITIGARANT) and CITIGATE were ‘similar to at least an average degree.’65 The junior mark consisted of eight letters, as did the majority of the senior marks and both had the letters c, i, t, and i in the same position. However, the second element of the junior and various senior marks differed. • BULL and BULL DOG were visually similar because of the shared four letters, which appeared at the beginning of the junior mark.66

56

Case T-84/08 Intesa Sanpaolo SpA v OHIM EU:T:2011:144.

58

Case T-77/10 Certmedica International v OHMI EU:T:2012:95. Case T-342/10 Hartmann v OHMI EU:T:2012:290. Case T-324/13 Endoceutics v OHMI EU:T:2014:672, [39]. Case T-161/10 Longevity Health Products v OHMI EU:T:2011:244. Case T-184/13 Skype v OHMI EU:T:2015:258, [36]. Case T-262/13 Skysoft Computersysteme v OHMI EU:T:2014:884, [29]–[30]. Case T-227/13 Bayer Intellectual Property v OHMI EU:T:2015:120, [37]. Case T-301/09 IG Communications Ltd v OHIM EU:T:2012:473. Case T-78/13 Red Bull v OHMI EU:T:2015:72, [29]–[34].

57 Red Bull GmbH v Sun Mark Ltd [2012] EWHC 1929 (Ch). 59 60 61

62 63 64 65 66

Visual Similarity 25 • BALLON D’OR and GOLDEN BALLS were visually dissimilar67 because the only shared element, the letters BALL were at the beginning of the senior sign and in a different position in the junior sign. The rest of the two marks were different and, in particular, they had different beginnings and endings. Courts have also been willing to find similarity of marks where there is an identical verbal element that is shared by the marks in question, even though the other letters are quite different. This is in keeping with the assumption that consumers will pay particular attention to the distinctive and dominant elements of a mark. Examples of such similarity include:

• CA MARINA and MARINA ALTA68 • BELLRAM and RAM69 • VISUAL MAP and VISUAL70 • BusinessShadow and SHADOW COMPLEX71 • ACNO FOCUS and FOCUS72 • BDO and BDO Remit.73

In relation to the final two examples, the courts emphasised that the non-shared elements (ACNO and Remit) were descriptive of the junior goods and services and so were of secondary importance in the comparison.

2.2 Font, Capitalization, Size, and Spacing In the case of a senior word mark, ‘the word as such is protected, not its written form’.74 This means that the mark is not limited to any one font. Consequently, the fact that the junior sign uses a different font from that depicted on the Register will not prevent a finding of visual similarity if the marks are otherwise similar.75 Likewise, where the senior mark is a word mark, its scope of protection covers the use of the mark in both upper and lower cases, and so the fact that the junior use employs different capitalisation from the senior mark as registered will not prevent a finding of visual similarity.76 Even where the senior mark is a word and device mark, rather than a pure word mark, it seems that different capitalisation may not prevent the marks from being visually 67 Case T-437/11 Golden Balls Ltd v OHIM EU:T:2013:441. 68 Case T-393/11 Masottina SpA v OHIM EU:T:2013:24. 69 Case T-237/11 Lidl Stiftung v OHIM EU:T:2013:11. 70 Case T-260/08 Indo Internacional v OHMI EU:T:2012:23. 71 Case T-717/13 Chair Entertainment Group v OHMI EU:T:2015:242, [49]. 72 Lancome v OHIM (n 35). 73 Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch). 74 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch.4, p. 28. 75 Case T-386/07 Peek & Cloppenburg v OHIM EU:T:2009:420; Case T-88/10 Inter IKEA Systems v OHMI EU:T:2011:368; Case T-522/10 Hell Energy Magyarország v OHMI EU:T:2012:9; Case T-445/12 Koscher + Würtz v OHMI EU:T:2014:829, [56]. 76 See REWE-Zentral v OHIM (n 54); Case T-66/11 Present-Service Ullrich GmbH & Co KG v OHIM EU:T:2013:48.

26 Similarity of Marks similar. Thus, in BergSpechte, the CJEU suggested that ‘Bergspechte’, used as an Internet keyword, may well be identical to the senior mark, which consisted most prominently of the term ‘BergSpechte’ with the words ‘Outdoor-Reisen und Alpinschule Edi Koblmuller’ and a picture of a bird wearing a bandana. Failing that, the court noted that ‘it would appear appropriate, subject to verification by the national court, to hold that that sign is similar to the trade mark’.77 It is most unusual for the CJEU to provide such direct advice to the national court, suggesting that this is a very clear case of similarity in the eyes of the court. Where the senior mark is a word and device mark, a difference between the fonts can lead to the marks being visually dissimilar, or at least not very visually similar. Examples78 include the marks in Figures 2.2 and 2.3:

Figure 2.2 Senior mark (left); junior mark (right)—marks visually dissimilar

Figure 2.3 Senior mark (left); junior mark (right)—marks visually dissimilar 77 Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günther Guni and trekking.at Reisen GmbH EU:C:2010:163, [27]–[28]. Though see Case T-295/11 Duscholux Ibérica v OHMI EU:T:2012:420, [63], a case involving one word and device mark and one figurative mark, where the difference in capitalisation between the two marks was said to contribute to the finding that the marks were visually dissimilar. 78 Duscholux Ibérica v OHMI (n 77); Quelle AG v OHMI (n 15).

Visual Similarity 27 Equally, a small difference between fonts used may not rule out similarity—see for example79 Figures 2.4 and 2.5:

Figure 2.4 Senior mark (left); junior mark (right)—marks visually similar

Figure 2.5 Senior mark (left); junior mark (right)

Indeed, the impact of a different font can depend on the context: in New Look, both parties used the term NL in different fonts for clothing. However, the GC essentially discounted this difference, finding that consumers would see the junior use as a sub- brand of the senior clothing. It should not be forgotten though that a similarity in the fonts can assist in establishing visual similarity. Thus, in Otocks v Fine & Country,80 the fact that both marks used a similar font, were capitalised and were underscored, was helpful in establishing confusion. In keeping with the idea that small differences are unlikely to rule out similarity, the courts have consistently held that the presence (or absence) of a space in one mark, but not the other, will not cause the marks to be visually dissimilar. When comparing PEERSTORM and PETER STORM, the GC noted that, even though consumers normally perceive marks as a whole, the ‘fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him’.81 Thus, the average consumer would recognise the word ‘storm’ and break down the PEERSTORM mark into ‘peer’ and ‘storm’, with the result that ‘dissimilarity stemming from the space in the earlier mark will fade into the background’.82 Similarly, the presence of spaces did not dispel confusion when 79 Figure 2.4: only slight differences from standard font in both marks—Case T-624/11 Yueqing Onesto Electric v OHIM EU:T:2013:137. Different initial letters the only ‘noticeable’ difference between the two marks; Figure 2.5: Case T-229/12 Advance Magazine Publishers v OHMI EU:T:2014:95, [45]. See also Case T-171/03 New Look v OHIMI EU:T:2004:293, [51], discussed immediately below 80 Fine & Country Ltd v Okotoks Ltd [2013] EWCA Civ 672, [111]–[115]. 81 Case T-30/09 Engelhorn v OHIM EU:T:2010:298, [60]. 82 Ibid, [61]. See similarly Chair Entertainment v OHMI (n 71), [43] (consumers would see BusinessShadow as its two constituent terms).

28 Similarity of Marks LIFESCIENCE was compared with LIFE SCIENCES (both with device elements)83 and when EVEREADY and EVER READY were compared.84 Even small lettering differences may not rule out visual similarity. Thus, neither the umlaut, nor the hyphen dispelled the visual similarity between NATURVAL and Natür-bal.85

2.3 Graphical Elements Visually comparing marks which consist of graphic material only (composite marks will be dealt with in the next chapter) is challenging. The presence of letters in word marks, and even in word and device marks, means that there is something objective to peg the comparison to. Of course, this is absent when the signs in question are purely graphical. We might think by analogy about the distinction between ascertaining what constitutes a substantial part of literary work, as compared to a substantial part of an artistic work, in copyright infringement. Moreover, there appear to be few decisions comparing purely graphic marks and those which exist are somewhat contradictory. The lack of an objective image classification system known to consumers86 means that inevitably courts tend to distil marks containing images into their abstract elements. This can overlap with the conceptual analysis, where courts also articulate what ‘lies behind’ the two (or more) signs in front of them. For example, in Dosenbach- Ochsner v OHMI (Figure 2.6), the signs were initially described as ‘stylised representations of an elephant seen in profile’ before a detailed comparison was undertaken.87

Figure 2.6 Junior mark (left); senior mark (right) 83 Case T-413/07 Bayerische Gesellschaft fur Innovation und Wissenstransfer mbH v OHIM EU:T:2009:34. 84 Oasis Stores Ltd’s Trade Mark Application [1998] RPC 631. 85 Case T-503/15 Aranynektár v EUIPO EU:T:2016:261, [33]–[34]. 86 In fact, images are classified through the Vienna Classification system, whereby images are classified according to a detailed hierarchical system. This though is used for administrative purposes at an international level and by some countries, such as the UK, to facilitate trade mark searches. The classifications are not visible to consumers at the point at which they would compare the marks, and so are not directly relevant to the Art 5(1)(b) comparison. 87 Case T-424/10 Dosenbach-Ochsner v OHMI EU:T:2012:58, [32].

Visual Similarity 29 Similarly, in Westwood v Knight,88 the judge initially characterised the two signs in Figure 2.7 as ‘orbs’:

Figure 2.7 Senior mark (left); junior mark (right).

Analogously, in relation to the two marks in Figure 2.8, the defining characteristic of both marks was said to be ‘parallel sloping stripes, equidistant, of the same width, contrasting with the base colour of the shoe, placed on the outside of the shoe’ leading to a finding of visual similarity, despite the acknowledged differences between the number of the stripes, their positioning, and inclination.89

Figure 2.8 Senior mark (left); junior mark (right)

The two marks in Figure 2.9 were described as ‘a five-pointed star placed within a circle’:90

Figure 2.9 Senior mark (left); junior mark (right)

88 Westwood v Knight [2011] EWPCC 8. 89 90

Case T-145/14 adidas v OHMI EU:T:2015:303, [34]–[44]. Case T-342/12 Fuchs v OHIM EU:T:2014:858, [44].

30 Similarity of Marks Similarly, the Swiss Federal Supreme Court described a red cross with a gap between its right ‘arm’ and the rest of the cross as a ‘red cross’.91 The courts then go on to conduct a more detailed comparison of the two marks, and it is here that there is a particular lack of clarity. In Dosenbach-Ochsner v OHMI, the GC noted that the junior mark was child-like, white on black and depicted many elephants, while the senior mark was abstract and clear cut, black on white and only showed one elephant.92 Stylisation also played a crucial role in Laddie J’s determination that the two figurative marks in Enterprise v Eurodrive93 were not visually similar enough to lead to confusion. Arguably, what unites these two cases is that the subject-matter of the marks were basic conceptual components that third parties might wish to use, and this may have caused the courts to pay particular attention to the visual differences between them.94 This was made explicit in a later case involving a stylised ‘enterprise’ mark, where particular emphasis was placed on the different stylistic flourishes because the primary component of the two marks was the letter ‘e’, and so the judge sought to avoid granting a monopoly in the latter to the senior user.95 These cases can be contrasted with Dainichiseika Colour & Chemicals Mfg Co Ltd v OHIM.96 Although, strictly speaking, this is a word and device case, there are strong analogies which make it worth examining. The marks in question depicted pelicans: one in a white circle which was more ‘cartoonish’, while the other was also in a circle but the circle was black and included the word PELIKAN and was more true to life. Here the court found that consumers would not remember the differences in stylisation or background and instead in both instances would bring the idea of a pelican to mind. The focus was more on the abstract idea behind the mark and less on the differences in Levi Strauss & Co v BPC Amersfoort BV,97 where the Brussels Commercial Court found that the signs were similar because both consisted of ‘curved stitching in lines forming the design of a pocket’. Similarly, in Westwood v Knight, HHJ Birss QC (as he then was), focused on the basic elements that made up the two marks (orbs with planetary rings around them) and noted that the differences between them (the junior sign was filled in with solid colour, had no dots and sometimes lacked a cross on top) would not dominate the marks’ respective impressions on the average consumer.98 The same is true of the Swiss Red Cross case,99 where although the Federal Supreme Court noted the differences between the two parties’ signs, it ultimately concluded ‘The [junior] sign, although stylised, still appears like a red cross.’

91 ‘Red Cross’ (2015) 46(1) IIC 142, 146. 92 Dosenbach-Ochsner v OHMI (n 87), [33]. 93 Enterprise Rent-A-Car Company v Eurodrive Car Rental Ltd [2005] EWHC 1429 (Ch), [10]. 94 Although technically, the need to keep certain marks free for others to use should not form part of the confusion analysis, see Case C-102/07 Adidas AG v Marca Mode EU:C:2008:217, [30]. See also by contrast Fuchs v OHIM (n 90), [44], where the hatched line and reversal of colouring were seen to be small differences that did not prevent a finding of visual similarity. 95 Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch), [200]. 96 Case T-389/03 Dainichiseika Colour & Chemicals Mfg Co Ltd v OHMI EU:T:2008:114. 97 Levi Strauss & Co v BPC Amersfoort BV [2011] ETMR 32, [18]. 98 Westwood v Knight (n 88), [127]. 99 ‘Red Cross’ (n 91), 146.

Aural or Phonetic Similarity 31

2.4 Length of the Signs The respective length of the parties’ signs can have a significant impact on whether they are visually similar. Where the signs are short, differences are more likely to be noticed. Thus, where the marks concerned were two100 or even three letters long, the GC noted that the significance of any differences would be heightened by the brevity of the marks.101 In fact the GC has adopted an expansive interpretation of what constitutes a ‘short’ mark. Where the marks at issue were CALDEA plus a figurative element and BALEA, the GC noted that the shortness of the marks (six and five letters) meant consumers were more likely to notice any differences between them.102 Analogously, the GC has found that where marks are short, the beginning and end are equally important (the usual assumption being that the beginning is the most important part for comparison purposes).103 As well as length being important in absolute terms, the fact that marks share the same length, or indeed are very different in length, can make an important contribution to the analysis of visual similarity. For example, where the marks involved were OLTEN and OFTEN, the GC relied in part on their shared length in finding visual similarity.104 In contrast, no visual similarity was found where the earlier mark was 20-letters long while the junior mark was a single letter and a plus sign.105

3. Aural or Phonetic Similarity 3.1 Relationship with Visual Similarity and Phonetic Equivalents Often, it will follow from the fact that word marks in particular are visually similar that they will also be aurally similar because they will share a sequence of letters. However, this is not inevitably the case. For example, a single letter in the ‘wrong’ place may lead to a significant difference in how marks which look quite similar sound. Thus, MERKUR and MERCURY106 were found to be visually similar, albeit only weakly, but the presence of the final ‘y’ prevented the marks from being aurally similar. 100 Case T-562/14 Yoo Holdings v OHMI EU:T:2015:363, [32] (YO similar to YOO). 101 Case T-274/09 Deutsche Bahn v OHMI EU:T:2011:451, [78] (ICE/IC4). 102 Case T-304/10 dm-drogerie markt v OHMI EU:T:2011:602, [43]. 103 Case T-221/06 Hipp & Co KG v OHIM EU:T:2009:330, [47]. 104 Case T-292/08 Inditex v OHIM EU:T:2010:399, [76]. What counts as the same length seems to be somewhat fluid—see Hipp & Co v OHIM (n 103), where the General Court commented that the marks (BLEMIL and BEBEMIL) were of similar length. 105 Case T-321/07 Lufthansa AirPlus Servicekarten v OHIM EU:T:2010:64, [33], upheld in Case C-216/10 P EU:C:2010:719 (Airplus International/A+ figurative mark). 106 Case T-106/09 adp Gauselmann v OHMI EU:T:2010:380 upheld in Case C-532/10 P adp Gauselmann v OHIM EU:C:2011:433.

32 Similarity of Marks Conversely, word marks, or marks containing verbal elements, may look different, but may be phonetically equivalent and thus will be visually similar or even identical. Examples include COMIT and COMET;107 BULLIT and BULLET;108 AYGILL’S and AGILE,109 and PLAY-DOH and PLAY DOUGH.110 What is interesting about the two later cases is that they would seem to rely on consumers’ familiarity with the ‘correct’ spelling influencing their ability to pronounce the phonetic equivalent term.111 This is not essential though, since in COMIT/COMET, the GC found that German consumers would not equate COMIT with COMET and would instead see it as an invented word.112

3.2 Assessment of Aural Similarity There is a general principle when comparing marks that, although marks should be viewed as a whole, particular attention should be paid to the distinctive and dominant elements of marks as these are the elements that consumers will focus on in making purchasing decisions.113 In relation to word marks and marks with verbal content, it has been assumed that consumers will pay particular attention to the beginnings of marks and (to a slightly lesser extent) the ends of marks. The central elements of marks, although relevant, tend not to be as persuasive. These assumptions are not rules of law, but rather are an attempt to articulate, on a general level, how it is that consumers view trade marks. Thus, they are rebuttable if there is some other factor (for example, a particularly prominent central element because it is much larger in size or is in a particularly distinctive font).

3.3 Common Beginning There are many examples of marks with common beginnings which have been found to be similar, even where they have noticeably different endings. Most prevalent are marks with at least four shared initial letters. Examples include: • MUNDICOLOR and MUNDICOR114 • STERISHIELD and STERISHEEN115 • HELLA and HELL116 107 Intesa v OHIM (n 56). 108 Red Bull v Sun Mark (n 57). 109 Peek & Cloppenburg v OHIM (n 75). 110 Hasbro Inc v 123 Nahrmittel GmbH [2011] EWHC 199 (Ch). 111 Red Bull, [84]; Hasbro v 123 Nahrmittel (n 110), [203]. 112 Intesa v OHIM, [42]. COMIT was already at two removes from the German word for ‘comet’, which is ‘komet’. 113 SABEL v Puma (n 2), [23]. 114 Case T-183/02 El Corte Inglés v OHMI (MUNICOR) EU:T:2004:79. 115 Liquid Plastics Ltd v Imperial Chemical Industries Plc, Trade Marks Registry (Appointed Person), O/272/07. 116 Hell Energy v OHMI (n 75), [53] (HELLA v HELL). The fact that the initial letters amounted to a shared syllable was persuasive.

Aural or Phonetic Similarity 33

• HAPPY HOURS and HAPPY TIME117 • LITHOFIN and LITHOFIX118 • INTERFOG and INTERFACE119 • FEMIBION and FEMIVIA.120

However, BEBA and BEBIO, which share only three initial letters, were found to be similar, with particular emphasis of the fact that the initial ‘beb’ element constituted a self-contained syllable.121 E-PLEX and EPILEX, which shared only two initial letters and differ in that only one contains a hyphen, were also found to be similar, with the GC once again highlighting that the shared initial letter ‘e’ amounted to a syllable in itself.122 Both of these examples though involve relatively short marks, and in the latter example, though there were differences in the central elements, the endings were also close.

3.4 Common Beginning, Additional Term in Junior Mark There is a subset of aural similarity decisions where the junior mark consists of the senior mark plus an additional term. Despite the fact that one might think that there is a noticeable aural difference between such marks as a result of the difference in length, the courts have tended to find that they are aurally similar. Examples include:

• IBS and IBSolution123 • IMPULSO and IMPULSO CREADOR124 • PEPE and PEPEQUILLO125 • VICTORY and VICTORY RED126 • SEVEN and SEVEN SUMMITS127 • VISUAL and VISUAL MAP128

117 Case T-352/14 The Smiley Company v OHMI EU:T:2015:491, [35]–[36]. 118 Case T-273/14 Lithomex v OHMI EU:T:2015:352, [44]. 119 Bayer v OHMI (n 64), [38]. 120 Endoceutics v OHMI (n 60), [41]. 121 Case T-41/09 Hipp v OHMI EU:T:2012:163, [38]. 122 Longevity v OHMI (n 61), [36]. 123 Case T-533/12 IBSolution v OHMI EU:T:2013:582 (presence of additional syllables was in later part of mark and so did not dominate and did not neutralise the phonetic similarity). 124 Evonik Industries v OHIM (n 29) (fact that ‘creador’ was presented as a separate word meant that the difference between the two signs was negligible from a phonetic point of view). 125 PJ Hungary v OHIM (n 27) (low degree of phonetic similarity on account of fact that first two syllables were identical, even though stress fell on different syllables in the two marks). 126 Case T-356/10 Nike International v OHMI EU:T:2011:543 (VICTORY v VICTORY RED) (Initial shared ‘victory’ element was the first that consumers would hear and therefore was phonetically dominant, despite the different lengths of the marks). 127 Case T-179/11 Sports Eybl & Sports Experts GmbH EU:T:2012:254 (medium degree of aural similarity: although signs differed in length, rhythm, and intonation, the common ‘seven’ element was pronounced in the same way and appeared at the beginning of the mark). 128 Indo Internacional v OHMI (n 70) (presence of term ‘map’ could not change overall impression that signs were similar because of the shared term ‘visual’).

34 Similarity of Marks

• SCRABBLE and SCRAMBLE WITH FRIENDS129 • BAMBINO and BAMBINO LÜK130 • F1 and F1 LIVE131 • DIN and DINKOOL132 • IGLO and IGLOTEX133 • ARTI and ARTITUDE134 • MOTOR and MOTORTOWN135 • SKY and SKYSOFT.136

However, aural similarity has generally not been found where the suffix of the longer mark corresponds to the shorter mark. Examples include: • NATURAVIVA and VIVA137 • K2 Sports and Sports.138 This is in line with the fact that the court is less likely to find aural similarity generally where an ending is shared, compared to when a beginning is shared. What is striking about these cases is that the GC in particular has tended to use what the court calls the ‘partial identity’ of the two parties’ marks, together with the fact that initial elements are often thought to dominate signs in order to effectively ignore the fact that additional elements on the junior sign change the length and rhythm of the junior mark, often quite substantially. The term ‘partial identity’, commonly used by the court is a loaded one with much rhetorical force. These marks could just as easily be labelled ‘partially different’. This almost appears like a policy decision, though it could equally be the result of an inflexible combining of two principles found elsewhere in the GC’s jurisprudence: (i) that initial elements normally dominate and (ii) that identity brings with it a strong presumption of confusion. Incidentally, it is worth noting that, although the GC does not articulate this, finding likely confusion in cases where the junior mark is of the form SENIOR MARK plus SUFFIX, will allow senior users to prevent uses which are an attempt to use a senior house mark with a qualifier. The approach does have its limits though and L112 was found not to be aurally similar to L.114 because the difference would not go unnoticed because of the shortness of the marks.139 129 JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290, [152]. 130 Case T-333/13 Westermann Lernspielverlag v OHMI EU:T:2015:490, [26]. 131 Case T-10/09 Formula One Licensing v OHMI EU:T:2014:1061, [43]. 132 Case T-621/14 Infocit v OHMI EU:T:2015:427, [44]. 133 Case T-282/13 Iglotex v OHMI EU:T:2015:226, [74]. 134 Case T-12/13 Sherwin-Williams Sweden v OHMI EU:T:2014:1054, [67]. 135 Case T-785/14 El Corte Inglés, S.A v OHMI EU:T:2016:160, [44]–[59]. 136 Skysoft v OHMI (n 63), [31]. 137 Case T-107/10 Procter & Gamble Manufacturing Cologne v OHMI EU:T:2011:551 (consumers would place most emphasis on the different beginnings than the shared endings). 138 Case T-54/12 K2 Sports Europe v OHIM EU:T:2013:50 (consumers would place most emphasis on the different beginnings than the shared endings). 139 Certmedica v OHMI (n 58).

Aural or Phonetic Similarity 35

3.5 Common Ending The fact that the parties’ signs share a common ending is not as persuasive as shared initial elements. This is because consumers are believed to place more emphasis on pronouncing the initial elements,140 meaning that the later elements will not dominate, and therefore will be noticed less by consumers.141

3.6 Common Central Elements Marks have been found to be weakly aurally similar where the central element is shared, despite the fact that the additional elements of such marks mean that they are different in length and rhythm. Thus, CA MARINA and MARINA ALTA were found to have a ‘certain phonetic similarity’ because of the presence of MARINA in each sign and the finding that the ‘alta’ element did not dominate the junior sign to such an extent that the shared ‘marina’ element was not perceived by consumers.142 SEIKO and SG SEIKOH GIKEN were said to be aurally similar, albeit weakly, because of the central position of the shared ‘seikoh’ element in the junior mark.143 Once again, there is an assumption (although a less emphatic one) on the part of the court, presumably based on assumed consumer perception, that the identical or almost identical element will override the clear differences between the marks.

3.7 ‘Swallowed’ Letters There is a group of marks where, although there is a phonetic difference between them, this is ‘swallowed’ in the course of the way that people pronounce the terms. This is easiest to recognise where the differing letter or syllable is ‘buried’ in the middle of the marks in question, but can also be seen where consumers place less emphasis on the endings, or even the beginning of the marks in question.

140 El Corte Inglés v OHMI (MUNICOR) (n 114), [83]. See though, Case T-493/12 Sanofi v OHMI EU:T:2014:807, [33] where DELPRAL and GEPRAL were aurally similar to at least an average degree and likewise Case T-502/12 Ferring v OHMI EU:T:2014:192, [62] (PENTASA and OCTASA phonetically similar). 141 See, e.g., Procter & Gamble v OHMI (n 137), [49]; Case T-505/11 Aldi v OHIM EU:T:2013:332 (ALDI/ DIALDI) (the phonetic distinction was reinforced by the fact that the different fonts that made up the junior mark would lead to it being read dial-di, rather than di-aldi); Case T-357/10 Kraft Foods Schweiz v OHMI EU:T:2012:312 (CORONA/KURUNA) (shared final ‘na’ syllable insufficient where the reason of the two marks would be pronounced differently; Case T-197/14 La Zaragozana v OHMI EU:T:2015:313, [39]–[40] (GREEN’S/AMBAR GREEN) (consumers would pay more attention to initial AMBAR element than shared GREEN element); Case T-272/13 Max Mara Fashion Group v OHMI EU:T:2014:1020, [52] (M&Co. not sufficiently similar to MAX & Co, especially given the low distinctive character of the & Co element); Case T-99/15 Sfera Joven, S.A. v EUIPO EU:T:2016:321, [45] (NOOSFER/SFERA) (low degree of phonetic similarity). 142 Masottina v OHIM (n 68), [35]–[36]. 143 Case T-519/10 Seikoh Giken v OHMI EU:T:2012:291, [30]–[32].

36 Similarity of Marks 3.7.1 Different Central Letters The phenomenon of ‘swallowed’ letters generally occurs where there is a single letter difference between the two marks.144 It is discussed most clearly in SEROSTIM/SEROSLIM.145 After noting that the two initial syllables of the marks were identical, the court noted that the final syllables differed by one letter. However, it observed that the identical ‘im’ ending of the differing syllables dominated and that the letters ‘t’ and ‘l’ would be ‘weakened, even swallowed’ by the preceding letter ‘s’.146 Other examples of marks where the central differing letter appears to have been ‘swallowed’ by the surrounding letters include:

• OLTEN and OFTEN147 • MESILETTE and MEDINETTE148 • YAKULT and YAKUT149 • PENTASA and PENSA150 • A-STARS and ASTER151 • MIVACRON and MITOCHRON.152

3.7.2 Different Initial Letters Differing initial letters can also be ‘swallowed’ by the letters that follow them, particularly when vowels are involved. Thus, HALDER was phonetically similar to ALDER CAPITAL because the letter ‘h’ would not be particularly noticeable, particularly when the term was pronounced quickly.153 A similar phenomenon seems to be at play in the GC’s finding that ALIXIR and ELIXIER were similar,154 though this rationale is not clearly articulated in the judgment. 3.7.3 Different End Letters In some cases, the courts have found that different final or penultimate letters will not be pronounced clearly and so their effect will be overridden by the identical preceding letters. Examples include: • GIGABYTE/GIGABITER155 • ECOFORCE/ECO FORTE156 • BABILU/BABIDU.157 144 Although sometimes it involves more than one letter, in these cases, the other different letter is generally the phonetic equivalent of a letter found in the earlier mark. For example, in Case T-451/11 Gigabyte Technology v OHMI EU:T:2013:13 (GIGABYTE/GIGABITER), the ‘y’ and the ‘i’ produce the same sound in this context. 145 Market Watch v OHMI (n 55). 146 Ibid, [37]. 147 Inditex v OHMI (n 104). 148 Hartmann v OHMI (n 59). 149 Case T-276/09 Kavaklidere-Europe v OHMI EU:T:2012:313. 150 Case T-544/12 Pensa Pharma v OHMI EU:T:2015:355, [102]. 151 Case T-521/13 Alpinestars Research v OHMI EU:T:2015:474, [38]. 152 Case T-312/15 Market Watch v EUIPO EU:T:2016:303, [30] (MITOCHRON/MIVACRON), upheld in Case C-402/16 P Market Watch v EUIPO EU:C:2016:924. 153 Alder Capital v OHIM (n 39), [89]. 154 Case T-157/10 Barilla v OHIM EU:T:2012:148. 155 Gigabyte Technology v OHMI (n 144). 156 Case T-361/12 Premiere Polish v OHIM EU:T:2013:630. 157 Present-Service Ullrich v OHIM (n 76) (BABILU/BABIDU). Presence of ‘u’ would lead to similar sounds when pronouncing the two final syllables.

Aural or Phonetic Similarity 37 However, it is not inevitable that a final letter will be ‘swallowed’. For example, where the relevant verbal elements were MERKUR and MERCURY, there was no aural similarity since the addition of the letter ‘y’ added an entire extra syllable to the junior mark as compared to the senior mark.158

3.8 Same Number of Syllables The fact that two marks have the same number of syllables does not necessarily contribute significantly to phonetic similarity. This is because other factors, such as how many words the marks are composed of, and lack of correspondence between the letters making up the marks, can lead to different rhythm and intonation. Thus, while NOVAL BLACK and WINE IN BLACK both had three syllables, the two marks only had a low degree of phonetic similarity.159

3.9 Impact of Device Marks Generally, the courts have taken the approach that the device element of a word and device or pure device mark is neutral to the phonetic comparison since a device has no inherent phonetic aspect and consumers will not articulate in words what the device depicts. Thus, in Peek & Cloppenburg,160 the fact that both marks (shown in Figure 2.10) included an image of a peacock did not result in aural similarity since consumers were more likely to refer to the junior mark by its word element THAI SILK, rather than referring to the sign as ‘the peacock mark’ (or equivalent).

Figure 2.10 Junior mark (left); senior mark (right)

158 adp Gauselmann v OHIM (n 106). One might have expected a similar outcome in Premiere Polish v OHMI (n 156), a case involving two opposing EUTMs: ECOFORCE/ECO FORTE. Certainly in the UK, ECOFORCE would be three syllables, while ECO FORTE would be four (with ‘forte’ pronounced ‘fort-ay’ instead of ‘fort’). The General Court was clearly aware that ‘forte’ might be pronounced differently in different EU Member States ([39]), but surprisingly dismissed these pronunciation differences as ‘minor). 159 Case T-420/14 Wine in Black v OHMI EU:T:2015:312, [30]–[33]. 160 Case T-361/08 Peek & Cloppenburg and van Graaf v OHIM EU:T:2010:152.

38 Similarity of Marks Similarly, in Nestle (RED MUG),161 the fact that both the senior marks (Figure 2.11) and the junior marks (Figure 2.12) contained the image of a red mug was not relevant to aural similarity since consumers would refer to the junior mark by its word element, GOLDEN EAGLE.

Figure 2.11 Senior marks

Figure 2.12 Junior marks

In Wilkinson’s Application162 the fact that both marks consisted exclusively of figurative elements meant that the aural comparison could not come into play. This approach is not unanimous though, and in Glenton España v OHMI,163 the GC suggested that consumers might refer to a device mark consisting of a man on a horse 161 Case T-5/08 Nestle v OHIM EU:T:2010:123. See likewise, Fuchs v OHIM (n 90), [49] (no phonetic comparison possible). 162 Wilkinson v Erol, Trade Marks Registry (Opposition), O/101/14, [22]. 163 Case T-376/09 Glenton España v OHMI EU:T:2011:225. See also Cobra Electronics Corporation v Cobra Automotive Technologies SpA, Trade Marks Registry (Opposition), O/380/10, [49], where aural identity was

Aural or Phonetic Similarity 39 holding a polo mallet aloft as ‘polo’, rendering it aurally similar to the junior mark, which consisted of a similar image, together with the words ‘POLO SANTA MARIA’. This seems particularly problematic, and there are many other ways that consumers might describe the image in words (e.g. ‘man on a horse’, ‘man with a mallet’ or even ‘Ralph Lauren’ mark) and it is indeed doubtful how frequently consumers would translate a device into words in the first place.

3.10 Impact of Descriptive Elements The fact that one of the signs in question has additional verbal elements not present in the other sign may have little impact on aural similarity where the additional elements are descriptive. Sometimes this is because consumers are unlikely to pronounce purely descriptive elements of marks. Thus, Bürgerbräu was phonetically similar to a mark, the verbal elements of which included not only ‘Bürger’, but also ‘premium pils’, ‘traditional brewed quality’, and ‘original’164 and ‘Ka We’ was highly aurally similar to a word and device mark containing the term ‘KW Surgical Instruments’.165 More difficult to understand are the decisions where it appears to be assumed that the descriptive elements are pronounced, yet they are considered to carry less weight phonetically.166 Part of the reason for this may be that the descriptive element will frequently be at the end of the mark, but it has also been explained on the basis that the descriptive element is less distinctive.167 It is submitted that this is erroneous—consumers will read marks as they see them and will not pause to consider the relative distinctiveness of the elements of the mark before them. In fact, the GC has recognised this in a number of cases, for example, the entirety of both JAMBO AFRIKA168 and AIRPLUS INTERNATIONAL169 formed the basis of their respective phonetic comparisons, despite their proprietors’ attempts to exclude the final elements of both. Granted, consumers may not recall descriptive elements accurately, but this is likely to result in them not being pronounced at all, rather than in their being pronounced less prominently. It is submitted that the best place to consider the distinctiveness of elements that are likely to be pronounced is under conceptual similarity.

found between the word mark COBRA and a device depicting a cobra. Also Case T-25/16 Haw Par v EUIPO EU:T:2017:303, [35]–[45] (not reported in English but described in A. Folliard-Monguiral and D. Rogers, ‘European Union Trade Mark Round-up 2017’ (2018) 13(5) Journal of Intellectual Property Law & Practice, 366). 164 Scandic Distilleries v OHMI (n 28), [48]. 165 Koscher + Würtz v OHMI (n 75), [61]. 166 For example, Case T-244/10 Tsakiris-Mallas v OHMI EU:T:2012:219, [53]. 167 Case T‑238/10 Stephanie Scatizza v OHIM EU:T:2011:613, [35]–[36].] (HORSE COUTURE & device/ HORSE & device)—this is an interesting case because in giving the ‘couture’ element little weight in the phonetic comparison, the General Court assumed that some of the public will see it as less distinctive and will pronounce it less prominently, while others will not pronounce it at all. 168 Case T-377/10 Preparados Alimenticios v OHMI EU:T:2013:600, [50] (JUMBO/JAMBO AFRIKA). 169 Lufthansa v OHIM (n 105), [38]–[39].

40 Similarity of Marks

3.11 Use of Phonetic Principles It is striking that there is relatively little use of ‘scientific’ phonetic principles in the aural comparison of signs. Instead, the focus is generally on less technical indicators, such as the length of the signs and the number of shared letters. However, phonetic principles have been used to support findings on aural similarity in a number of cases.170

3.12 Foreign Terms When one or both of the marks under consideration contain a term which is in a language that is not the dominant language amongst the relevant class of consumers, the courts assess the phonetic component of the mark(s) by reference to how the relevant consumers would pronounce it, rather than to how it ‘should’ be pronounced according to the pronunciation rules of the language of the mark. This is particularly important in the EUTM context, since EUTM applications which originate in one EU Member State will often be opposed by the owner of a national mark from a different Member State. The relevant question for the purposes of this comparison will be how consumers in the territory of the earlier national mark would pronounce the mark. In practice, this means that if consumers are familiar with the foreign language in question, or at least the particular terms in question, the comparison is conducted on the basis of the ‘correct’ pronunciation. Thus, in NEC,171 the fact that Danish and Swedish consumers were familiar with English meant that they would pronounce the signs in the English way. Conversely, if the relevant consumers are unfamiliar with a language, courts tend to proceed on the basis of how the mark in question would be pronounced according to the linguistic rules and practices in the language spoken by the relevant consumers.172 In extreme cases, where the language in question is inaccessible to relevant consumers, the aural aspect of the unfamiliar language would be ignored entirely. For example, the GC found in HYPOCHOL,173 that the average German consumer would not be able to pronounce Chinese characters and so their presence was ignored entirely. Analogously, 170 For example, Case T-517/10 Pharmazeutische Fabrik Evers v OHMI EU:T:2012:372, [36] (no phoneme in common); dm-drogerie markt v OHMI (n 102), [48] (use of International Phonetic Alphabet to define and determine pronunciation of certain ‘plosive consonants’); Present-Service Ullrich v OHIM (n 76), [65] (use of German (Kölner Phonetik) and English (Soundex and Metaphone) phonetic codes); Case T-122/13 Laboratoires Polive v OHMI EU:T:2014:863, [47]; Case T-26/13 dm-drogerie markt v OHMI EU:T:2014:70, [37]–[41]. 171 Case T-501/08 NEC Display Solutions Europe v OHIM EU:T:2011:527 (CMORE/SEE MORE (stylised)). 172 See, e.g., Case T-203/09 Olymp Bezner GmbH & Co KG v OHIM EU:T:2011:195 (OLIMPO & device/OLYMP, where the GC referred to the rules of pronunciation set out in the dictionary of the Royal Spanish Academy to determine how Spanish consumers would pronounce a mark which originated in Germany. See similarly, in relation to the term AYGILL’S, Peek & Cloppenburg v OHIM (n 75), [31] (apostrophe would alert French consumers to the fact that this was an English term, but they would nevertheless pronounce it in the French way); Case T-346/ 17 Hotelbeds Spain, SL v EUIPO EU:T:2018:134, [44] (GUIDEGO (Stylised)/GUIDIGO) (French, Finnish, and Spanish consumers would pronounce the junior and senior marks in the same way, so it was irrelevant that English consumers would view the junior mark as composed of the two words ‘guide’ and ‘go’.) 173 Pharmazeutische Fabrik Evers v OHMI (n 170) (HYPOCHOL/HITRECHOL & device of Chinese characters).

Aural or Phonetic Similarity 41 in Inter IKEA Systems v OHMI,174 the phonetic effect of an umlaut was ignored for jurisdictions where it was not used (and where presumably consumers would not know what to do with it).

3.13 Abbreviations Differing approaches have been taken to the impact of abbreviated elements on phonetic similarity, depending upon the nature of the abbreviation. In United States Polo Association v OHIM, where the marks were POLO-POLO and U.S. POLO ASSN., the GC found that the marks were phonetically similar to a medium degree since consumers would see the ‘U.S.’ and ‘ASSN’ elements of the junior mark as an abbreviation and either would not pronounce them, or would pronounce them letter by letter.175 On the other hand, where the senior mark was GALILEO and the verbal element of the junior mark was GSS GALILEO SISTEMAS Y SERVICIOS the marks were not phonetically similar because consumers would refer to the junior mark merely as GSS, and would not pronounce ‘Galileo Systemas y Sevicios’.176 What these cases demonstrate is that abbreviations that are descriptive in nature, or identify the type of company involved (e.g. Inc., Ltd.) are unlikely to be pronounced and so will not impact on aural similarity while abbreviations with no recognised meaning will be pronounced and so can serve to aurally distinguish the two marks. On a related note, the propensity of consumers to abbreviate marks can make confusion more likely. Thus, where the senior mark was KENTUCKY FRIED CHICKEN and the junior mark was KENNEDY FRIED CHICKEN, the Appointed Person took note of the fact that consumers might well abbreviate both of the two marks to the identical letters KFC.177 However, he cautions that such an approach can only be taken in cases where consumers are genuinely likely to reduce the mark to an abbreviation.

3.14 Reversal of Verbal Elements The fact that the aurally similar element occupies a different position in the marks in question does not rule out aural similarity. Thus,178 where the senior mark was TACK CEYS and the junior mark was TESSA TACK, there could still be aural similarity because the shared element dominated while the non-shared elements would be pronounced more softly. In another case, the fact that ‘Monte-Carlo’ appeared in a different position in the marks CASINO DE MONTE-CARLO and MONTE CARLO

174

Inter IKEA v OHMI (n 75). United States Polo Association v OHMI (n 36), [40]. Case T-488/08 Galileo International Technology LLC v OHIM EU:T:2011:574, [41]. 177 Sarmad’s Trade Mark Application [2006] ETMR 2, [21]. 178 Case T-555/11 tesa SE v OHIM EU:T:2012:594.

175 176

42 Similarity of Marks CASINO ENTERTAINMENT did not rule out aural similarity, albeit at a low level.179 Presumably, it will be a matter of fact in future cases whether or not the shared element is aurally dominant.

4. Conceptual Similarity Overreliance on conceptual similarity can create false positives. It is inherent in human nature to search for meaning, and lawyers have special training to do just this. It is tempting to put too much weight on the concept behind the mark, and to view this factor as determinative because the ‘meaning’ of the mark is somehow the most fundamental aspect of it. However, Geoffrey Hobbs QC, sitting as the Appointed Person in Lacoste, warns against this, noting that concepts per se cannot be protected as trade marks.180 Instead, the rights of a proprietor are limited by the registered representation of his mark, which limits the concept behind the mark by reference to the distinctive elements of the mark. Thus, Lacoste’s crocodile marks, an example of which is shown in Figure 2.13, were not similar to the word mark ALLIGATOR, even though underlying both was the concept of a reptile.

Figure 2.13 An example of Lacoste’s crocodile marks

4.1 Establishing Meaning Generally, tribunals take judicial notice of the meaning of marks, in order to judge their conceptual similarity. Tribunals tend to take a relatively ad hoc approach to deriving meaning, based on their own perceptions of how consumers see marks and the meanings argued for by the parties concerned. In many cases, this is a quite straightforward and uncontroversial process, but how far it is legitimate for those deciding cases to take 179 Societe Anonyme des Bains de Mer et du Cercle des Etrangers a Monaco v Anglofile International Ltd (t/a Monte Carlo Casino Entertainment) [2013] EWPCC 38, [34]. 180 Baker Street Clothing Ltd v La Chemise Lacoste SA, Trade Marks Registry (Appointed Person), O/333/10.

Conceptual Similarity 43 into account information that is in no way contained on the face of the marks themselves remains an open question. To take two examples, in Saks Hair (Holdings) Ltd’s Application,181 the Appointed Person accepted the Hearing Officer’s finding that the mark, THE DOGS, might be perceived as greyhounds taking part in greyhound racing, or shortened forms of ‘the dogs testicles’ (or ‘bollocks’) or ‘going to the dogs’. In Lacoste, the Appointed Person relied on the reputation acquired through Lacoste’s use of its mark to find that its reptile device would be viewed as a ‘Lacoste’ mark, rather than an ‘alligator’ mark. While it would be undesirable for judging the conceptual content of marks to become an overly complicated process, it is submitted that the complete lack of rigour with which the conceptual analysis of marks is conducted across the trade mark system creates unpredictable, and sometimes undesirable, results.

4.2 One Meaning Rule Rejected It was argued in Saks’ Application that if any of the meanings of a junior mark are the same as the meaning of the senior mark, the conceptual comparison should be based on this meaning alone.182 This was rightly rejected by the Appointed Person, who said that there was no reason to restrict the assessment to a single meaning if average consumers will perceive others. It is submitted that this is in accordance with how consumers view marks, as consumers are capable of ascribing multiple meanings to ambiguous terms.183 Of course, this does not prevent tribunals from placing particular emphasis on the most common meaning in appropriate cases.

4.3 Use of Wikipedia and Dictionaries The GC has refused to admit evidence of meaning originating from Wikipedia since entries in those sources can be amended at any time, by any person, and can be amended anonymously, and so they lack certainty.184 Occasionally though, standard dictionaries have been used by courts.185

181 Saks Hair (Holdings) Ltd v The Little Wing Trading Company Ltd, Trade Marks Registry (Appointed Person), Application O/271/13. 182 Ibid, [35]. This appears to have been based on Case C- 191/ 01 P Wrigley v OHIM EU:C:2003:579 (DOUBLEMINT), where, in judging descriptiveness of ambiguous marks, emphasis is placed on the descriptive meaning. The purpose of this is to give a wide meaning to descriptiveness in order to keep the maximum number of potentially descriptive marks free for other traders to use. Such considerations do not have the same strength when judging likelihood of confusion. 183 See, e.g., Now Click 2 Eat Ltd v Kunnure, Trade Marks Registry (Appointed Person), O/485/17, [12], where the device mark could be read as NOW CLICK 2 EAT or NOW CLICK EAT 2 and also the discussion of Mr Alexander QC, in Alterego Retail Group Ltd v Retail Royalty Company, Trade Marks Registry (Appointed Person), O/468/17, [27]–[32]. 184 Case T-338/12 Rocket Dog Brands v OHIM EU:T:2013:327, [32]. See analogously in relation to evidence pertaining to similarity of goods Case T-444/12 Novartis v OHMI EU:T:2014:886, [47]. 185 ‘Red Bull v Bulldog’ (2014) 45(8) IIC 989, 990 (Swiss Federal Administrative Court).

44 Similarity of Marks

4.4 The Appropriate Level of Abstraction Perhaps the most difficult element of the conceptual comparison of marks is identifying the concept behind the marks in question. Those of an analytical mindset could probably find some form of conceptual link between a good number of marks. However, the relevant benchmark for assessing conceptual similarity is the average consumer of the goods or services in question. This average consumer is not imbued with the qualities of a trade mark lawyer, or of a devotee of cryptic crosswords. Additionally, the EUIPO Guidelines counsel against assuming that marks are conceptually similar merely because they can be grouped under the same generic term, as generic categories can be very wide. For example, ‘jaguar’ and ‘elephant’ would both fall under the generic term ‘animal’ but should not be considered conceptually similar because consumers are not likely to link the two.186 Likewise, Mr Purvis QC, sitting as Appointed Person,187 found that consumers would not conceptualise ROCHESTER and DORCHESTER as towns in Southern England, but rather as the town of Rochester and the town of Dorchester respectively. Because of the specific nature of these concepts, the two marks were not conceptually similar. Although this seems like a somewhat extreme example, the underlying point is that it would be erroneous to believe that the conceptual link can be too vague. In practice, courts and tribunals have tended to reject any conceptual comparison beyond that contingent on a relatively superficial analysis of the concepts lying behind the marks in question. Thus, the GC rejected the argument that two signs showing pictures of roosters were conceptually similar because both evoked the concept of ‘pride’ since the concept was not ‘sufficiently immediate’.188 Similarly, where the word element of the senior mark was TRES TORRES and that of the junior mark was TORREMAR, the Appointed Person labelled the link suggested by the senior user to the concept of a tower (‘torre’ in a number of Romance languages) as ‘rather tenuous’.189 At the same time though, consumers would not be expected to be alert to every element of detail and may not make fine distinctons between different subcategories of objects. For example, in Jack Wills v House of Fraser,190 Arnold J described what was depicted in Figure 2.14 as ‘a silhouette of a pheasant with top hat and cane’ and ‘silhouette of a pigeon with top hat and bow tie’ respectively. However, both were characterised in the actual conceptual comparison as ‘a silhouette of a bird with accoutrements suggestive of an English gentleman, in particular a top hat’, with Arnold J commenting that the conceptual similarities were of more importance than the conceptual differences between a pheasant and a pigeon.191

186 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch. 4, p. 57. 187 Argon Consulting & Management Ltd v JT International SA, Trade Marks Registry (Appointed Person), O/049/17, [42]–[45]. 188 Case T-143/11 Consorzio vino Chianti Classico v OHIM EU:T:2012:645, [49]. 189 TORREMAR Trade Mark [2003] RPC 4, [34]. 190 Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch). 191 Ibid, [94].

Conceptual Similarity 45

Figure 2.14 Senior ‘pheasant’ mark (left); junior ‘pigeon’ mark (right)

Similarly, the GC found that in a case192 that, both marks in Figure 2.15 would be seen as ‘a member of the cat family’.

Figure 2.15 Senior mark (left); junior mark (right).

Marks are also unlikely to be conceptually similar if consumers are required to engage in analytical exercises in order to find similarity. Thus, in Noble Food Ltd’s Application,193 the Hearing Officer had found that HAPPY SANDWICH and HAPPY QUICHE were similar to HAPPY MEAL, the registered trade mark, not only because both contained the term ‘happy’, but also because consumers would remember the senior mark as HAPPY + prepared food descriptor. Sandwiches and quiches are also prepared foods, so, in the Hearing Officer’s opinion, these marks were conceptually similar. The Appointed Person criticised this approach, as ‘word play’ as the average consumer would not, taking the senior mark as his starting point, ‘generalise out’ the concept behind that mark to find a concept that also included the junior marks. Similarly, the Appointed Person in Lacoste noted that ‘people do not normally construe trade marks or engage in extended thought processes for the purposes of pairing and matching them’.194 An interesting contrast can be seen though before the GC, where the court found that consumers would see the conceptual similarity between HAPPY HOURS and HAPPY TIME, both being defined as ‘a state of being happy over an unspecified time period’.195 192 Case T-113/16 Arctic Cat Inc v EUIPO EU:T:2018:43, [37]. 193 Noble Foods Ltd v McDonald’s International Property Co Ltd, Trade Marks Registry (Appointed Person), O/181/14,  [51]. 194 Baker Street v Lacoste (n 180), [49]. 195 Smiley Company v OHMI (n 117), [37]–[38]. See similarly, Case T-170/12 Beyond Retro v OHMI EU:T:2014:238, [72], where the difference between BEYOND VINTAGE (genuinely old) and BEYOND RETRO (old style) was underplayed as both would be seen as ‘a style of clothing based on a recollection of the past’.

46 Similarity of Marks

4.5 Meaningless Marks Where both the senior and junior signs are meaningless, no conceptual comparison of the marks is possible, and so the conceptual similarity factor is effectively neutral to the overall comparison of the marks.196 However, if one of the marks is meaningless, but the other mark has a meaning, there is conceptual dissimilarity. This is true whether it is the junior197 or senior mark198 which is meaningless. It should be noted that marks will be considered meaningless where the meaning is unlikely to be known to relevant consumers (e.g. because the meaning is derived from a language that those consumers will be unfamiliar with).199 Where EUTMs are involved, language differences mean a mark may be understood in one jurisdiction but not in others, leading to a finding of conceptual difference in relation to those jurisdictions; where the mark is understood and conceptual neutrality where it is not understood.200 Conversely, marks which are misspellings of dictionary words and are likely to be recognised as such by relevant consumers will be treated as if they have the meaning of the dictionary word. Both of these phenomena are discussed in more detail below.

4.6 Marks with a Clear Meaning and ‘Counteraction Theory’ There is a special category of marks which are considered to have a ‘clear and specific meaning so that the public is capable of grasping it immediately’. This meaning need not be related to the goods in relation to which the mark is used or registered. Where such a meaning is present and the comparator mark either has no meaning or has a completely different meaning, the conceptual distance between the two marks may be so far that it will be immediately obvious to consumers and so may ‘counteract’ any visual or aural similarity. Such a clear and specific meaning has been found in relation to two types of marks: those including the names of cultural figures and those including dictionary words. Examples including cultural figures are: 196 See, e.g., Case T-444/10 ESGE v OHMI EU:T:2013:89, [41] (BAMIX/KMIX); Case T-543/13 Three-N- Products v OHMI EU:T:2015:134, [37] (PRANAYUR/AYUR). 197 Case T-344/09 Hearst Communications v OHMI EU:T:2012:324, [59] (senior mark, COSMOPOLITAN, would be understood as an ordinary English word; junior sign, COSMOBELLEZEA, had no meaning); Case T- 487/12 Eckes-Granini v OHMI EU:T:2013:637 (speakers of Italian and other Romance languages would understand PANINI to mean bread rolls, but other consumers might not). 198 For example, Case T-194/09 Lan Airlines v OHIM EU:T:2011:34, upheld in C-198/11 P Lan Airlines v OHIM EU:C:2012:289 (senior mark, LAN, meaningless; junior mark, LINEAS AEREAS DEL MEDITERRANEO LAM, would be seen as referring to air transport services); Eckes-Granini v OHIM (n 197) (senior mark: GRANINI, meaningless; junior mark: PANINI, would be understood as referring to bread rolls); Bayer v OHMI (n 64), [41]– [42] (the meaning of senior mark, INTERFOG, was obscure whereas the junior mark, INTERFACE, would be understood as a technical term used in the field of IT). 199 Obscure meanings will also not be taken into account. For example, the originators of the ASOS mark might have intended it as an acronym for the phrase ‘as seen on screen’, but this would not be known to the relevant consumers—Maier v ASOS Plc [2015] EWCA Civ 220, [116]. 200 Hearst Communications v OHMI (n 197) (COSMOPOLITAN would be understood by UK consumers, but COSMOBELLEZA would not be).

Conceptual Similarity 47 • PICASSO versus PICARO.201 • OBELIX versus MOBLIX.202 • MERKUR (the German for the Roman god Mercury and the planet of that name) versus Archer Maclean’s Mercury (mercury has no meaning in German).203 Examples including dictionary words are:

• SIR versus ZIHR204 • BASS versus PASH205 • IDEA versus IKEA206 • COSMPOLITAN versus COSMOBELLEZA207 • RED BULL versus BULLDOG208 • CHAMPION versus CHEMPIOIL209 • RADAR versus RADO210 • REBELLION versus REVELLION.211

It should be noted though that even where the dictionary meaning of a term is clear, the fact that the term is viewed as laudatory may prevent counteraction from occurring. Thus, AGILE was not conceptually different enough from AYGILL’S to override the aural and visual similarity between them.212 A clear and specific meaning has not been found where the term or mark in question is merely evocative or suggestive of the meaning contended. Examples include: • MUNDICOR versus MUNDICOLOR213 • BEBEMIL versus BLEMIL.214 Similarly, a mark which will be recognised as related to a certain context, such as the medical context, but needs further analysis to be understood by consumers will not give rise to counteraction. Thus, RESPICUR, which needed to be broken down into 201 C-361/04 P Ruiz-Picasso v OHIM (CJEU) EU:C:2006:25, [20]. 202 Albert René v OHIM (n 49), [97]–[99]. 203 adp Gauselmann v OHIM (n 106). 204 Mülhens v OHIM (n 14), [50]. 205 Case T-292/01 Phillips Van Heusen Corp v OHIM EU:T:2003:264, [54]. 206 Case T-112/06 Inter-Ikea v OHMI EU:T:2008:10, [77]–[78]. 207 Hearst Communications v OHMI (n 197). 208 Sun Mark Ltd v Red Bull GmbH, Trade Marks Registry (Appointed Person), O/068/10. 209 Case C-437/16 P Wolf Oil v EUIPO EU:C:2017:737, [47]. 210 Ashley v Rado Uhren AG, Trade Marks Registry (Appointed Person), O/640/17, [31]. 211 Talentcorp Pty Ltd v Kingsley, Trade Marks Registry (Appointed Person), O/389/17, [14]–[28] (the Appointed Person rejects that argument that counteraction applies only to marks with a famous meaning, finding that it also applies to dictionary words). 212 Peek & Cloppenburg v OHIM (n 75). Although see contra, Cachet Kids Ltd v Cath Kidson Ltd, Trade Marks Registry (Appointed Person), O/404/14, [25]–[30], where counteraction was found where the marks in question were CACHET KIDS and CATH KIDS. The element with the clear meaning was CACHET, despite the fact that ‘cachet’ was said to be commonly understood as ‘prestige’. 213 El Corte Inglés v OHMI (MUNICOR) (n 114), [95]. 214 Hipp & Co v OHIM (n 103), [54]–[69].

48 Similarity of Marks its constituent components of ‘respiratory’ and ‘cure’ was not sufficiently conceptually distinct from RESPICORT for counteraction to come into play.215 Analogously, counteraction could not apply to the marks EMI and ENI even if they had a meaning to professionals in the market in question.216 Counteraction will not apply when the mark in question is ambiguous. Thus, MONSTER ROCK was not sufficiently conceptually distinct from MONSTERS OF ROCK, despite the fact that it was composed of two dictionary words, since ‘monster’ could refer to a frightening creature or a concept of excellence.217 Finally, marks which consist of terms which may well have a dictionary meaning will not give rise to counteraction where consumers in the territory in question would not understand that meaning. Thus, French consumers would not know the precise meaning of the term QUANTUM,218 German consumers would not be familiar with the word REVERIE, 219 it was unclear that UK consumers would be aware that JURA was the name of a Scottish island220 and European consumers in general would not know what SEIKO meant.221 There is obvious logic to the idea that where one mark has a clear meaning and the other has no meaning, or a very different meaning, this distinction will ‘jar’ consumers into finding the two marks to be conceptually distinct. However, there is a degree of rigidity about counteraction theory that is unattractive. In particular, once the combination of strong meaning of one mark plus meaningless/different meaning of the other mark is identified, counteraction of any visual and aural similarities is automatically assumed without any analysis of how strong the visual and/or aural similarities are, and whether they themselves might counteract the conceptual distinctions. This is particularly true of the GC, but not necessarily of other tribunals. For example, the UK Intellectual Property Office’s Appointed Person recognised the marks BATMAN and BATSMAN both had clear, different dictionary meanings (the superhero and a cricketer respectively), but the high degree of visual and aural similarity between the two marks meant that the conceptual difference did not counteract the visual and aural similarity, and so the marks were similar overall.222

4.7 Descriptive Elements The addition of a descriptive element to a mark that would otherwise be similar to another mark will generally be insufficient to differentiate the two marks conceptually. Thus, the addition of the term LONDON did not differentiate CIPRIANI

215

Case T-256/04 Mundipharma v OHMI EU:T:2007:46, [58]. Case T-599/11 Eni v OHMI EU:T:2014:269, [66]–[72]. 217 Case T-216/10 Monster Cable Products v OHMI EU:T:2011:691, [45]–[46]. 218 Case C-171/06 P T.I.M.E. ART v OHIM EU:C:2007:171, [88] and [98]–[100]. 219 Case T-246/06 Redcats v OHMI EU:T:2008:141, [46]. 220 Whyte and Mackay Ltd v Origin Wine UK Ltd & Anor [2015] EWHC 1271 (Ch), [39]–[41]. 221 Seikoh Giken v OHMI (n 143). Although Seiko, in Japanese, is a given name. 222 Adelphoi Ltd v DC Comics, Trade Marks Registry (Appointed Person), O/440/13. 216

Conceptual Similarity 49 LONDON from CIPRIANI,223 the US element did not differentiate U.S. POLO ASSN. from POLO-POLO224 and the term SANTA MARIA POLO (the name of a Spanish polo club) did not distinguish the sign SANTA MARIA POLO with a device of a polo player on a horse from a device mark consisting of a polo player on a horse.225 In these cases, the geographical element is acting to locate the venue of the goods or services being offered, rather than to give a message about trade origin and so the conceptual content is purely descriptive and plays little role in the conceptual analysis. However, where the geographical element in fact describes approximately the same place, it can strengthen conceptual similarity. For example, THE UNITED KINGDOM UKULELE ORCHESTERA was conceptually close to THE UKULELE ORCHESTRA OF GREAT BRITAIN226 and CASINO DE MONTE-CARLO and MONTE CARLO CASINO ENTERTAINMENT were conceptually similar.227 However, more vague indications of location may serve to conceptually distinguish the two marks. Thus, the addition of CORNER to MASALA CORNER distanced that mark from MASALA since the latter connoted an aspect of Indian cookery itself while the former mark suggested a location for eating Indian food.228 Outside the geographical sphere, the term FASHION SHOES did not differentiate SEVEN FASHION SHOES from SEVEN,229 the term BIKER did not differentiate BIKER MILES from MILES,230 the ‘MEN’ element did not differentiate BUDMEN for clothing from BUD,231 DRIVE did not differentiate SKYDRIVE (in the context of computer software) from SKY,232 TEEN did not differentiate TEEN VOGUE from VOGUE,233 CASTILLO did not differentiate CASTILLO DE LIRIA from ILLIRIA,234 the fact that one dinosaur was drinking a glass of milk did not differentiate it from another image of a dinosaur in relation to dairy products,235 SOFA WORKSHOP and SOFAWORKS were conceptually similar,236 and the term CACHAÇA (the name of a 223 Hotel Cipriani SRL & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2008] EWHC 3032 (Ch), [124] (affirmed by CA). 224 C-327/11 P United States Polo Association v OHIM EU:C:2012:550, [27]. 225 Glenton España v OHMI (n 163), [45]. See likewise, Lifestyle Equities CV & Anor v Santa Monica Polo Club Ltd & Ors [2017] EWHC 3313 (Ch), especially [90]–[91] (BEVERLY HILLS POLO CLUB similar to SANTA MONICA POLO CLUB). 226 The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a The United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC), [57]. 227 Monte Carlo (n 179), [34]. 228 Raj Foods Ltd v Masala World Ltd, Trade Marks Registry (Invalidity), O/019/08, [25]. MASALA EXPRESS on the other hand was conceptually closer as it could refer to obtaining the Indian food suggested by the MASALA mark quickly. See also the discussion of the Appointed Person in Land Securities plc’s Application, Trade Marks Registry (Appointed Person), O/339/04, [15] as to how locational qualifiers can serve to differentiate (although the examples given by the Appointed Person tend to involve names of buildings which have been in use and so have acquired distinctiveness independently of the primary geographical meaning). 229 Tsakiris-Mallas v OHMI (n 166). 230 Case T-385/03 Miles Handelsgesellschaft International mbH v OHIM EU:T:2005:276. 231 Case T-129/01 José Alejandro v OHIM EU:T:2003:184, [49]–[54]. 232 British Sky Broadcasting Group Plc & Ors v Microsoft Corporation & Anor [2013] EWHC 1826 (Ch), [150]. 233 Case T-509/12 Advance Magazine Publishers v OHMI EU:T:2014:89, [45]. 234 Azienda Agricola v OHIM (n 16), [46]. 235 Case T-21/15 Franmax v EUIPO EU:T:2016:241, [76], upheld in Case C-361/16 P Franmax v EUIPO EU:C:2016:834. 236 Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), [83].

50 Similarity of Marks Brazilian spirit distilled from sugar cane) did not differentiate the mark CACHAÇA 51 from the figurative mark 61 A NOSSA ALEGRIA.237 One exception is that LONDON EVENING MAIL was found (with some hesitation on the part of the judge) to be dissimilar to DAILY MAIL. What distinguishes this case is that the junior mark contained an additional term, as well as the geographical term, which differed from the senior mark.238 In other cases though, the geographical term also acts as the main indicator of trade origin. In such cases, the conceptual importance of the geographical term is considered in its own right. Thus, the sign LONDON was conceptually different from LONSDALE since the former was a geographical location and the other a surname239 and MADEIRA was conceptually different from MARDARA ROCK since the former would be seen representing the wine which comes from the island of Madeira while the latter was suggestive of a specific (and different) geographical location, albeit one that would be unknown to most consumers.240 On the other side of the coin, where the senior trade mark was GEOLABS for soils laboratory testing, there was conceptual identity to the sign GEOLAB.241 It was acknowledged that the marks in question were allusive, but it seems to follow from the fact that once an allusive or perhaps even descriptive term is validly registered and is actually being used to indicate the origin of the goods then it should be protected against other uses of conceptually similar terms. Arguably this approach poses potential difficulties. It is possible for descriptive terms that other traders may need to use to be registered on the basis of visually distinctive features. However, this may well be lost in the conceptual analysis where the non-descriptive visual element may not be part of the comparison, and marks which look quite different could nevertheless be conceptually identical. This could tip the overall balance of similarity of marks in favour of confusion in a way that bars access to marks which should be free for all to use.242 Finally, it should be noted that the impact of a descriptive or allusive term on the conceptual analysis of a mark will, in the case of composite marks, depend on whether that element is seen as distinctive and dominant, negligible, or somewhere in between. As will be seen in Chapter 3, descriptive elements of composite marks are often deemed 237 Companhia Muller v OHIM (n 17), [94]—although the marks were found to be similar overall based on other elements. 238 Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322 (Ch), [72]. Although see Evegate Publishing Limited v Newsquest Media (Southern) Limited [2013] EWHC 1975 (Ch), [190]–[197] (SOUTH EAST FARMER v SOUTHERN FARMER) where lack of confusion was found even though only one element was different. The court there though does not clearly differentiate between the three different facets of similarity and so it is difficult to be entirely clear about the court’s approach to conceptual similarity in this context. Similarity, in British Shorinji Kempo Federation’s Trade Mark Application [2014] EWHC 285 (Ch), [62], BRITISH SHORINJI KEMPO FEDERATION was held not confusingly similar to SHORINJI KEMPO since ‘shorinji kempo’ was the generic term for a type of martial art. The combination of ‘geographical term plus generic term’ seems particularly problematic for establishing likely confusion 239 Lonsdale Sports Ltd v Erol [2013] EWHC 2956 (Pat), [4]‌. 240 Winez Ltd’s Trade Mark Application [2006] ETMR 19, [34]. In fact, the senior MADEIRA mark was a certification mark, rather than a trade mark, but a regular Article 5(1)(b) analysis was conducted. 241 Geolabs Limited v Geo Laboratories and Edwards [2012] EWPCC 45, [19]. 242 Although, it can also have the opposite effect too: Case T-34/04 Plus v OHMI EU:T:2005:248, the addition of a lion’s head played a major role in visually and conceptually distinguishing the mark TURKISH POWER from the senior mark POWER.

Conceptual Similarity 51 negligible or of little impact, meaning that they never even enter into the conceptual comparison or feature only faintly.243

4.8 Impact of Graphical Elements 4.8.1 Word v Picture In the Elephant case, the GC found that the senior word mark ELEFANTEN (the German term for ‘elephants’) was conceptually identical to a figurative mark consisting of diagonal rows of elephants. This appears to be based on the assumption that consumers would vocalise the figurative mark (or at least think about it in verbal terms) as ‘elephants’. This assumption is made explicit in the EUIPO Guidelines which state, ‘Conceptual identity also exists between a word and an image showing what the word represents’.244 Similarly, when faced with a senior mark consisting of the word COBRA and a junior mark consisting of a simplistic representation of a cobra, the UKIPO’s Hearing Officer found the two to be conceptually identical.245 Likewise, conceptual similarity was found between a heart device composed of pink dots and various word marks containing the word ‘heart’ with the Hearing Officer observing that the heart device would be vocalised as the word ‘heart’.246 In Hearst Holdings, Birss J found conceptual similarity between the name of the cartoon character BETTY BOOP and a picture of the character because the image would spontaneously and inevitably trigger the recollection of the name.247 However, the Appointed Person in Lacoste adopted a different approach. The senior mark was Lacoste’s crocodile device, while the junior mark was the word ‘alligator’. The Appointed Person rejected the application in Europe of the US doctrine of legal equivalents, whereby, in the Appointed Person’s words ‘the graphic representation of a non-verbal mark and a word which describes it to be given the same significance in determining the existence of a likelihood of confusion’. 248 The reason he gave for doing so was the need to also consider what made the non-verbal mark distinctive, which was not necessarily invoked by the word that would describe the figurative element. In this case, the Appointed Person found that consumers would verbalise the senior mark as ‘Lacoste’, rather than ‘crocodile’ or ‘alligator’. This meant that the senior user’s proposed 243 See, e.g., Lancome v OHIM (n 35), [65]. The marks in question were ACNO FOCUS and FOCUS, but because of the descriptive nature of ‘acno’, almost all of the comparison centred on the shared term ‘focus’. 244 Dosenbach-Ochsner v OHMI (n 87); EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch.4, p.62. 245 Cobra Electronics v Cobra Automotive (n 163), [48]. In fact, Baker Street v Lacoste (n 180), was decided during the course of Cobra Electronics, but was differentiated in Cobra because, while Lacoste’s crocodile device summoned up the concept ‘Lacoste’, the only concept triggered by the cobra device was that of a cobra. 246 Walton v J & P Coats Ltd, Trade Marks Registry (Opposition), O/063/14, [51]. 247 Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch), [56]. Interesting, Birss J distinguishes this case from Baker Street v Lacoste (n 180), discussed further below) because in this case, the device triggered the word, whereas in Lacoste the question was whether the word would trigger the device. It might be added that Betty Boop is a precise image, whereas there are numerous different ways of depicting a crocodile or alligator. 248 Baker Street v Lacoste (n 180), [45].

52 Similarity of Marks ‘crocodile’ versus ‘alligator’ conceptual comparison was based on a false premise. It is submitted that this approach is flawed. Instead of taking the mark as registered, and what it depicts, as the starting point for the scope of protection, it takes the senior use into account in a way that narrows the scope of protection. It is noteworthy that, in response to the same problem, the US has developed the ‘doctrine of legal equivalents’,249 whereby if ‘a mark comprises a representation of an animal or individual and another mark consists of the name of that animal or individual, such designations are to be regarded as legal equivalents [and hence similar] in determining likelihood of confusion under the Trademark Act’.250 However, the doctrine is not absolute, and if the figurative mark is not recognisably a depiction of what is described in the word, similarity will not automatically follow.251 The EUIPO Guidelines, quoted above, do not mention such an exception, but since both the EU and US approaches are based on consumer perception, presumably if consumers could not recognise the object depicted in the picture element, the same would apply. 4.8.2 The Effect of Figurative Elements in a Composite Mark The impact of the figurative element of a composite mark on its conceptual comparison will depend on the relationship between the figurative element and the word element. Thus, the figurative element can enhance the conceptual similarity of the two marks where the figurative element is connected to the shared word element. For example, in Olive line/O.LIVE252 (marks shown in Figure 2.16), the presence of a figurative olive leaf enhanced the concept of an ‘olive’ in the junior mark. This meant that the initial term was seen as ‘olive’, rather than the term ‘o’ and ‘live’, contributing to a finding of conceptual similarity with the senior mark ‘Olive line’.

Figure 2.16 Senior mark (left); junior mark (right)

To take another example, the inclusion of a penguin and snowflake in the mark shown in Figure 2.17 reinforced the conceptual reference to an ‘igloo’, which was shared with the senior word mark IGLO:253

249 This doctrine was discussed and rejected in the EU context in Baker Street v Lacoste (n 180), [45]. 250 Squirrel Brand Co v Green Gables Investment Co 223 U.S.P.Q. 154, 156 (TTAB 1984). 251 McCarthy § 23:27 stresses that the doctrine leads to a factual presumption, rather than a matter of law. J. Thomas McCarthy, McCarthy on Trade Marks and Unfair Competition (5th ed, Thomson/West, 2017–2019), § 23:27. 252 Case T-273/10 Olive Line International v OHMI EU:T:2012:246, [66]. See similarly Dainichiseika Colour v OHMI (n 96), [91], where the combination of the word ‘pelikan’ and a picture of a bird with a large beak meant that the two elements ‘reinforced each other’. 253 Iglotex v OHMI (n 133), [87].

Conceptual Similarity 53

Figure 2.17 Junior mark

However, a device which has no relationship to the word element will be irrelevant to the conceptual comparison where the word element dominates the mark. Thus, in 4 EVER/FOREVER (marks shown in Figure 2.18), the presence of a bird of prey device did nothing to conceptually differentiate the junior FOREVER mark from the senior 4 EVER mark as the device was relatively banal and did not ‘add to, clarify or alter the meaning of the English word “forever” ’.254 This is perhaps a surprising result given the size of the device in the composite mark (larger than the verbal element) but appears to follow inexorably from the GC’s finding that the word element was distinctive and dominant, to the extent that the figurative device was effectively discounted.

Figure 2.18 Senior mark (left); junior mark with bird of prey device (right)

The impact of figurative elements on composite marks will be discussed further in Chapter 3. 4.8.3 Pictures Versus Pictures There are relatively few decisions involving purely figurative marks. The approach taken by those that exist is to begin by articulating in words the concept behind the two

254

Case T-528/11 Aloe Vera of America v OHMI EU:T:2014:10, [78].

54 Similarity of Marks marks. The verbalisations tend to be in quite general, abstract terms, opening the door to findings of conceptual similarity.255 This trend is best illustrated by examples from the decisions. The two marks in Figure 2.19 were both characterised as ‘a traditional royal orb with a planetary ring like Saturn’.256

Figure 2.19 Senior mark (left); junior mark (right)

The marks in Figure 2.20 were characterised as ‘insects’:257

Figure 2.20 Examples of the senior mark (left); and junior marks (right)

The marks in Figure 2.21 were both descripted as having ‘a polo player’:258 255 Although for an example where a more precise description led to no similarity been the marks, see Case T-350/13 Jordi Nogues v EUIPO EU:T:2017:633, [60] (both marks where bulls, but because the junior mark was described as a ‘malevolent defiant’ bull, it was not conceptually similar to a mark composed of the silhouette of a bull, the demeanour of which could not be discerned). 256 Westwood v Knight (n 88), [127]. 257 Green Flag Ltd v Groupama Insurance Company Ltd, Trade Marks Registry (Opposition), O/334/12, [43]. While there was a finding of conceptual similarity overall based on this ‘insect’ characterisation, the Hearing Officer qualified this finding by noting that the senior insects were ‘cute’ and ‘babyish’, while the junior insects were ‘worker ants’. 258 Case T-90/13 Herdade de S. Tiago II v OHMI EU:T:2014:778, [38].

Conceptual Similarity 55

Figure 2.21 Example of the senior mark (left) and junior mark (right).

The marks in Dosenbach-Ochsner v OHMI, (shown in Figure 2.6) were characterised as ‘elephant’ and ‘elephants’ respectively and were considered conceptually identical.259 In American Home Products v Knoll, the marks in question were characterised as ‘moving person’260, while in Jack Wills v House of Fraser, the two logos (shown in Figure 2.14) were conceptualised as ‘a silhouette of a bird with the accoutrements suggestive of an English gentleman, in particular a top hat’.261 The marks in Figure 2.22 were characterised as ‘a moving dinosaur giving the impression of a friendly, happy creature’:262

Figure 2.22 Senior mark (left); junior mark (right).

Although not strictly figurative only, this case263 is of interest because the concept of ‘galloping ponies’ was sufficient to overcome the fact that in the former mark there was one pony while in the latter there were two (see Figure 2.23).

259

Dosenbach-Ochsner v OHMI (n 87), [50]. American Home Products Corporation v Knoll Atkiengesellschaft [2002] EWHC 828 (Ch), [24]. 261 Jack Wills v House of Fraser (n 190), [94]. 262 Franmax v EUIPO (n 235), [78]. 263 Lifestyle Equities (n 225), [106]. 260

56 Similarity of Marks

Figure 2.23 Senior mark (left); junior mark (right)

What unites this group of decisions is that in each one, the adjudicator has formulated and applied a label at a relatively abstract level that describes both marks. This is true even in decisions where the adjudicator has begun by giving a more detailed description of the concept behind the two marks. Perhaps this is a consequence of being faced with the difficult task of having to verbalise what is essentially graphical, however, the result seems to be that the decisions are predisposed towards a finding of conceptual similarity. Of course, there are clear differences between the marks shown above in each case, but the approach to identifying the common concept has resulted in these differences being dealt with largely as part of the visual comparison, rather than the conceptual comparison. 4.8.4 Abstract Figurative Elements Abstract figurative elements with no recognisable meaning can be equated to meaningless words. Thus, where the abstract element is being compared with another abstract element, there is conceptual neutrality. However, where the abstract element is being compared with a sign with a recognised meaning, the signs will be conceptually dissimilar. 4.8.5 Obscure Figurative Elements Analogous to the conceptual analysis of foreign and obscure word elements, the concept lying behind a mark will only be attributed to the mark if it is likely to be recognised by the average consumers of the goods or services in question. If it is unlikely to be recognised, the graphic element of the mark will be treated as abstract, and therefore meaningless. This will limit the available findings on conceptual similarity to conceptual neutrality and will render the finding of conceptual similarity impossible, unless there is an additional meaningful element within the mark in question. For example, the mark shown in Figure 2.24 was accepted to be a profile of Table Mountain in South Africa. However, this would not be recognised by the average UK consumer and so the mark was conceptually dissimilar to the senior word mark TABLE MOUNTAIN:264

264

Hornig v Distell Limited and J Sedgwick & Company Ltd, Trade Marks Registry (Invalidity), O/325/13, [37].

Conceptual Similarity 57

Figure 2.24 Junior mark

Similarly, the mark in Figure 2.25 would be seen by consumers as an abstract device, even though a computerised watching service had picked it up as a mark containing the term MOJO. Thus, the figurative mark was conceptually dissimilar to the earlier MOJO word mark.265

Figure 2.25 Junior mark

4.9 Misspellings Marks which are misspellings of dictionary words are generally seen as conceptually identical or highly similar to the correctly spelled terms. This is because consumers will immediately see and understand the meaning behind the misspelled word. Examples include: • AXE and AX266 • PLAY-DOH and PLAY DOUGH267 • REDD and RED.268 The growth of abbreviated forms of words and phrases in text messages has only served to strengthen the conceptual proximity between misspelled and correctly spelled words as deliberate misspellings have become a common feature of everyday life. Examples include: • FOREVER and 4EVER269 • SEE MORE and CMORE.270 265 Mio Ottimo Jeans Officino Ltd v Ars Parfum Creation Consulting GmbH, Trade Marks Registry (Opposition), O/343/13,  [33]. 266 Giorgio Armani SpA v Sunrich Clothing Ltd [2010] EWHC 2939 (Ch). 267 Hasbro v 123 Nahrmittel GmbH (n 110). 268 Redd Solicitors LLP v Red Legal Ltd and Martin Crighton [2012] EWPCC 54 (PCC). 269 Aloe Vera of America v OHIM (n 254), [69]. 270 NEC Display v OHIM (n 171), [46]–[47].

58 Similarity of Marks A further possibility would be that the consumer would misremember or mistranscribe the misspelled word as the correct spelling, leading the two to be even closer conceptually. Thus, ACTIVE and AKTIVA were seen as conceptually similar.271 This approach though seems to relate as much to visual similarity as it does to conceptual similarity. Care needs to be taken though, because certain misspellings have their own conceptual connotations as recognised slang words. Thus, the semantic content of LUV was not identical to that of LOVE, even though consumers would recognise the former as a misspelling of the latter.272

4.10 Foreign and Obscure Terms The meaning of a term in a language other than that generally spoken in the relevant jurisdiction can form part of the conceptual analysis, but only when the average consumer in that jurisdiction would be familiar with the term. In practice, this means that foreign terms will be more likely to have conceptual content in some jurisdictions than others, making conceptual similarity more likely.273 For example, German consumers are generally considered to have a greater understanding of English terms than Spanish consumers. It is also the case that more ‘basic’ terms are more likely to be understood outside their ‘mother tongue’ jurisdiction than more complex or esoteric terms. Examples of marks or terms which would be understood outside their ‘mother tongue jurisdiction’ include:

• LOFT (French)274 • COOL (German)275 • WATERPERFECT (non-English EU consumers)276 • HUT (French)277 • RETRO and VINTAGE (non-English speaking public)278

Examples of terms that would not be understood include: • DONUT (Spanish consumers)279 • STOLICHNYA and STALINSKYA (UK consumers in 2003)280 271 Applied Energy Products Ltd v Hansgrohe AG, Trade Marks Registry (Appointed Person), O/090/06, [21]. 272 Elliott v LRC Products Ltd, Trade Mark (Opposition), O/103/12. 273 Since if the term is not understood, it will be considered ‘meaningless’, which can give rise to conceptual neutrality at best. This may though lead to overall similarity since it allows what would otherwise be a descriptive term to dominate. If this term is shared, there may be overall similarity. 274 Case T-385/09 Annco Inc v OHIM EU:T:2011:49. 275 Infocit v OHMI (n 132), [50]. 276 Case T-123/14 BSH v OHMI EU:T:2015:52, [35]–[36]. 277 Case T-330/12 Hut.com v OHMI EU:T:2014:569, [45]. 278 Beyond Retro v OHMI (n 195), [69]. 279 Case T-333/04 House of Donuts International v OHIM EU:T:2007:105. 280 S C Prodal 94 Srl v Spirits International NV [2003] EWHC 2756 (Ch).

Conceptual Similarity 59

• ASSOS (UK consumers; an ancient Greek town in Turkey)281 • FISHBONE (Greek consumers)282 • MAP (French consumers)283 • ENSTO and ONESTO (both EUTMs—the former had meaning in Finnish, the later a meaning in Italian, and so only Italian consumers would derive any meaning from the marks in question)284 • CORONA (Estonian, Latvian, and Lithuanian consumers—‘coronoa’ is Spanish for ‘crown’)285 • DIN (German consumers)286 • GLASS and UNITED (Polish consumers)287 • TUDOR (Czech and Slovak consumers)288 • REAL QUALITY (German consumers—although the indivudal words were similar to German words, the composite phrase would not make sense in German).289

In a similar vein, meanings in obscure or defunct languages will be discounted for the purposes of conceptual comparison. Thus, the fact that the mark BABILU had a meaning in an extinct Semitic language and in Esperanto had no effect on the conceptual comparison because neither of these languages would be understood by the relevant consumer.290 Likewise, the presence of the term ‘ca’, which means ‘house’ in the Venetian dialect was too obscure to affect the conceptual context of the mark in question.291 Technical terms also will not be considered to make a contribution to the conceptual content of marks, unless they are likely to be understood by the relevant consumers. Thus, the fact that the marks CORDIO and CORDIA were respectively the English abbreviation used to refer to the concept of ‘Coral Reef Degradation in the Indian Ocean’ and a genus of plants and trees that are characterised by having a pleasant smell and different flowers, commonly planted in gardens, would not be understood by the average consumer and so the marks were meaningless rather than conceptually distinct.292 Similarly, the suffix ‘chol’ would be understood by doctors, but not by end users of medicines.293 Analogously, obscure facts will also not influence the conceptual analysis of marks. Thus, the fact that COCO DE MER was a type of fruit associated with fertility in the Seychelles would not be known to the average consumer,294 nor would 281 Maier v ASOS Plc [2014] EWHC 123 (Ch). 282 Case T-415/09 New Yorker SHK Jeans GmbH & Co KG v OHIM EU:T:2011:550. 283 Indo Internacional v OHMI (n 70). 284 Yueqing Onesto v OHIM (n 78), [39]. 285 Kraft Foods v OHMI (n 141), [33]. 286 Infocit v OHMI (n 132), [50]. 287 Case T-297/13 Junited Autoglas Deutschland v OHMI EU:T:2014:893, [35] and [42], upheld in Case C-579/ 14 P EU:C:2015:374. 288 Case T-1/13 Advance Magazine Publishers v OHMI EU:T:2014:615, [35]. 289 Case T-816/14 Tayto Group v OHMI EU:T:2016:93, [64]. 290 Present-Service Ullrich v OHIM (n 76). 291 Masottina v OHIM (n 68). 292 Case T-388/12 Singer v OHIM EU:T:2013:536. 293 Pharmazeutische Fabrik Evers v OHMI (n 170). 294 Coco de Mer Ltd v Chanel Ltd [2004] EWHC 992 (Ch).

60 Similarity of Marks the fact that bulldogs were originally bred to bait bulls.295 Similarly, oceanographers would understand the difference between seas and oceans, but the average consumer of vitamin supplements would not, meaning that SEVEN SEAS and SEVEN OCEANS were conceptually identical.296 In a figurative example,297 consumers would see the sign in Figure 2.26 as a polo player riding a bicycle, rather than a man playing the nascent, but not widely known, sport of bicycle polo, paving the way for conceptual similarity to a device of a ‘standard’ polo player riding a horse:

Figure 2.26 Junior mark

Even when average consumers would understand the basic foreign terms making up the sign in question, syntactical differences inherent in the relevant languages can reduce the level of conceptual similarity. Thus, the GC298 (affirmed by the CJEU in this aspect of the case299) found that, although French consumers would understand the term GOLDEN BALLS and English consumers would understand the term BALLON D’OR, the fact that the word order in the two languages was different, and that the words were not exact equivalents (BALLON D’OR literally means ‘ball of gold’, rather than ‘golden balls’) meant that there was weak conceptual similarity at best. Similarly, THE ENGLISH CUT was only weakly similar in conceptual terms to IL CORTE INGLES.300 This approach is questionable since the key point of the conceptual analysis is to look behind the small details of marks (which would arguably be best dealt with under the 295 This fact was used to claim conceptual similarity between RED BULL and BULLDOG in Sun Mark v Red Bull (n 208). Oddly, in ‘Red Bull v Bulldog’ (n 185), a parallel case, the Swiss Federal Administrative Court appears to have believed that this fact would be known to Swiss consumers. It is submitted that this finding is a consequence of the Court searching for the meaning of the term ‘bulldog’ in dictionaries, rather than taking a more rounded view of consumer perception. 296 Nature’s Gift International, Inc v Merck Consumer Healthcare Ltd, Trade Mark Registry (Opposition), O/383/ 15, [35]. 297 Case T-265/13 Polo/Lauren v OHMI EU:T:2014:779, [30]. 298 Golden Balls v OHIM (n 67), [41]–[51] and [61] to [63]. 299 Case C-581/13 P Intra-Presse SAS OHIM v Golden Balls EU:C:2014:2387. 300 Case T-515/12 El Corte Inglés v OHIM EU:T:2014:882, upheld in El Corte Inglés v OHIM (n 12).

Conceptual Similarity 61 visual and phonetic analysis) and to consider their underlying meaning. Requiring the two terms to be in the exact same structure and word order could potentially render dissimilar, or weakly similar, a significant number of marks which are understood by consumers to mean the same thing. A contrasting approach can be seen in British Shorinji Kempo Federation’s Trade Mark Application,301 when comparing two marks containing the term ‘shorinji kempo’, Warren J observed: Because, to the English reader, the martial art called shorinji kempo may not be familiar, there is a risk of proceeding as if those words are distinctive even though, objectively, the words are in fact generic.

This approach would seem to be at odds with the idea that the meaning of marks is determined by how the average consumer perceives them, and that if the meaning of a foreign term is not understood, it is discounted. Presumably it is motivated by the desire to avoid monopolies in terms that others may wish to use descriptively in the future.

4.11 Non-Roman Characters In follows from the approach to foreign terms that where the terms are not only in a foreign language, but are also in non-Roman characters, the meaning of that term can only form a part of the conceptual comparison if relevant consumers are able to read and understand the non-Roman typeface. Given that the languages of almost all of the EU Member States use Roman characters, this will be a relatively rare occurrence. In fact, the use of a non-Roman typeface can, in and of itself, contribute to the semantic content of the mark, independent of the actual meaning of the terms written. Thus, the use of Chinese characters together with the term HITRECHOL for medication meant that consumers would associate the mark in Figure 2.27 with Chinese medicine, differentiating it conceptually from the junior HYPOCHOL word mark.302

Figure 2.27 Senior mark

301 302

British Shorinji Kempo Federation’s Trade Mark Application (n 238), [62]. Pharmazeutische Fabrik Evers v OHMI (n 170), [40].

62 Similarity of Marks A similarly one-dimensional approach to Chinese characters was taken in the DOUBLE HAPPINESSS decision303 (marks shown in Figure 2.28), where the fact that consumers would not understand the characters, meant that the conceptual meaning was reduced to ‘Chinese character’ or even ‘a pattern’. This meant that the primary comparison was visual rather than conceptual.

Figure 2.28 Junior mark (left); Senior mark (right)

An analogous situation can be seen in relation to the signature of Stradivarius (Figure 2.29), which though in Roman lettering, was held (perhaps somewhat uncharitably) to be illegible, and so could not form the basis of a conceptual comparison.304

Figure 2.29 Signature of Stradivarius

4.12 Names The fact that both parties’ marks are names will not, in and of itself, lead to conceptual similarity. In fact, a very narrow approach has been taken to finding that names are conceptually similar. Thus, where the senior mark was McKENZIE and the earlier mark McKINLEY, the marks were not conceptually similar.305 The GC explained that, while both would be recognised as Celtic names, there were many other names that also fitted

303 N.V. Sumatra Tobacco Trading Co v CTBAT International Co Ltd, Trade Mark Registry (Opposition), O/005/ 18, [14]. 304 Case T-340/06 Stradivarius Espana SA v OHIM EU:T:2008:241. See similarly, Case T-461/15 Guccio Gucci SpA v EUIPO EU:T:2016:605, [35] (junior mark was composed of four capital Gs, variously inverted and upside down. Since consumers would see this as an abstract pattern and would not recognise the letters, it was not conceptually similar to the senior mark, which was composed of two capital Gs). 305 Intersport International v OHIM (n 32), [40]–[41]. For an extreme example see Case T-41/12 LS Fashion v OHMI EU:T:2015:125, [69] where conceptual neutrality was seen between the names LOREN SCOTT and L’WREN SCOTT.

Conceptual Similarity 63 into this category. Thus, names will not be conceptually similar unless they are recognised as being linked with the same family.306 The GC also pointed out that names can have the reverse effect, and lead to conceptual dissimilarity resulting in counteraction of any visual or phonetic similarity where the person known by that name is famous. This was what happened in Ruiz-Picasso (discussed earlier).307 The UKIPO has been slightly more willing to find a moderate level of similarity where both marks are names, finding ‘some’ conceptual similarity between FIORUCCI and FIORELLI. What was helpful in reaching this finding is that both appeared to be Italian surnames, rather than just general surnames.308 This though seems at odds with the GC’s decision, since there the names were also defined by region. The EUIPO Guidelines suggest that names may be conceptually similar where one is a diminutive of the other (e.g. Frank and Frankie) or when they will be understood as referring to the same person (e.g. a full name versus just a person’s surname).309 However, it cannot be assumed that consumers will translate names between languages—for example, non-Italians would not necessarily equate GIOVANNI with JOHN.310

4.13 Non-traditional Marks There are hardly any cases where tribunals have been called on to compare non- traditional marks for the purposes of establishing whether confusion is likely. Instead, such a comparison has taken place in the context of the validity of registered designs. Under Article 25(1)(e) of Regulation 6/2002, a design which infringes a registered trade mark can be declared invalid. This includes infringement by confusion and the normal likelihood of confusion test applies. However, non-traditional marks, particularly those which are quite utilitarian in nature will often not lend themselves to a conceptual analysis because they do not embody any concept. Thus, the GC found311 that no conceptual analysis was possible between the respective shapes shown in Figures 2.30 and 2.31:

Figure 2.30 Senior mark (left); applied for design (right) 306 See, e.g., Case T-715/13 Lidl Stiftung v OHMI EU:T:2015:256, [45], where ‘castelló’ and ‘castello’ would be seen as referring to the same family name. 307 Ruiz-Picasso v OHIM (n 201), [20]. 308 Lunan Group Ltd v Edwin Co Ltd [2006] EWHC 3278, [61]. 309 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch.4, p. 52. 310 Case T-559/13 Giovanni Cosmetics v OHMI EU:T:2015:353, [39]. 311 Case T-148/08 Beifa Group v OHMI EU:T:2010:190, [110]; Case T-55/12 Su-Shan Chen v AM Denmark A/S EU:T:2013:219.

64 Similarity of Marks

Figure 2.31 Senior mark (left); applied for design (right)

A conceptual analysis may be possible though when the non-traditional mark is an embodiment of something else. A good example might be the much-litigated chocolate rabbit shape.312 In making a comparison though, care should be taken that what is depicted is at a level of abstraction that will be recognised by consumers. For example, the fact that the designer intended wavy lines on a bottle to be an impressionistic representation of a mountain range may not be recognised by consumers. Also, where the non-traditional mark includes wording or a figurative element (e.g. a bottle shape with a word embossed on it), these may be the subject of a conceptual comparison along the lines of the normal comparison of word and/or device marks.313 Non-traditional marks are considered in more detail in Chapter 8.

4.14 Abbreviations and Single Letters The fact that two marks are abbreviations will not per se lead to conceptual similarity, even if they share the same number of letters, as this link is too abstract.314 Instead, tribunals consider how consumers will perceive the specific abbreviations in question, and will consider what they are assumed to stand for. For example, where the signs in question were ICE and IC4, the GC noted that IC is a recognised abbreviation for

312 For example, a conceptual comparison seems to be implicit in Golden Rabbit Trade Mark (I ZR 37/04) Bundesgerichtshof (Germany), 26 October 2006, [2007] ETMR 30, though it is not made explicit. 313 See for example the comparison of the terms ONLY and ONLY GIVENCHY in Case T-586/10 Aktieselskabet af 21. november 2001 v OHMI EU:T:2011:722. This is a somewhat odd case, in that what was applied for was essentially the external packaging of perfume, but it was applied for as a figurative mark, rather than a 3-D mark, and was treated by the GC accordingly. 314 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch.4, p. 57. See analogously Case C-20/14 BGW Marketing -& Management-Service GmbH v Bodo Scholz, EU:C:2015:714 for how the meaning of an abbreviation combined with a word may vary depending on context.

Conceptual Similarity 65 intercity trains and E and 4 could be perceived as ‘express’ and ‘fourth generation’ respectively.315 In many cases though, consumers will ascribe no meaning to the abbreviation,316 or will not recognise the meaning,317 and so no conceptual comparison will be possible. Conflicting approaches have been taken as to whether single letters can have a meaning for the purposes of a conceptual comparison. The GC appears to suggest that generally single letters will not have conceptual content as they have no semantic meaning,318 unless they have a specific meaning derived from an external source. For example, the letter X has a particular meaning in mathematics and information technology.319 This rule is not absolute though, and in comparing two marks composed of the letter ‘D’ for clothing, the GC found that ‘it cannot, in principle, be ruled out, that single letters of the alphabet might have their own conceptual content’.320 Indeed, the CJEU has subsequently confirmed that, although single letters will often be of low distinctiveness, and therefore of less assistance to the comparison of marks, there can be no absolute rule to this effect, and each case must be examined on its merits.321 However, the cautious language used perhaps suggests that this is the exception, rather than the rule. A more favourable approach was taken in a case involving two representations of the letter K, where the GC found ‘the graphic representation of a letter is likely to evoke a very distinct entity in the mind of the relevant public, namely a particular phoneme. In that sense, a letter refers to a concept.’322

4.15 Numbers Analogous to abbreviations, the mere fact that two signs contain numbers should not result in conceptual similarity in and of itself. However, the GC has shown itself willing to employ a mathematical analysis to consider whether numbers are conceptually similar. Thus, when comparing CACHAÇA 51 with 61 A NOSSA ALEGRIA, the GC noted that 51 and 61 were conceptually similar because they were both two-digit, whole, natural, odd number with a shared second digit, but were conceptually dissimilar because 50 represents five tens while 60 represents six tens, although the two numbers were adjacent in ascending order of number of tens.323 Likewise, conceptual similarity was 315 Deutsche Bahn v OHIM (n 101), [87]–[88]. 316 E.g., Balfour Beatty plc v PE International AD, Trade Marks Registry (Opposition), O/013/13, [19] (PE); The Royal Academy of Arts v Errea’ Sport SpA, Trade Mark Registry (Opposition), O/036/15, [14] (RA). 317 E.g., Shanghai Commercial Bank Ltd v Groupement des Cartes Bancaires, Trade Marks Registry (Opposition), O/338/12, [67] (consumers would not recognise SCB as short for Shanghai Commercial Bank). 318 E.g., Case T-363/06 Honda Motor Europe v OHIM EU:T:2008:319, [42]; Case T-189/09 Poloplast v OHIM EU:T:2011:611, [83]; Case T-89/12 Repsol YPF v OHIM EU:T:2013:335, [42]; Case T-531/12 Tifosi Optics v OHMI EU:T:2014:855, [78]–[81]. 319 Case T-378/12 Capitalizaciones Mercantiles v OHIM EU:T:2013:574, [61]– [62]. See also C- 84/ 16 P Continental Reifen Deutschland v Compagnie générale des établissements Michelin and EUIPO EU:C:2017:596, [38]. 320 Case T-521/15 Diesel v EUIPO EU:T:2017:536, [55]. 321 Continental Reifen v Michelin (n 320), [73]. 322 Case T‑824/16 Kiosked Oy Ab v EUIPO EU:T:2018:133, [66]. 323 Companhia Muller v OHIM (n 17), [96].

66 Similarity of Marks found between PENTASA and OCTASA since both marks contained initial references to the Greek terms for the numbers five and eight respectively.324 However, it is hard to imagine consumers employing this level of mathematic reasoning when comparing two numbers.

5. Conclusion Similarity of marks lies somewhere between an art and a science. Since SABEL v Puma,325 tribunals have consistently used visual, aural, and conceptual aspects of marks to test similarity. The analysis tends to be a structured one, and one where it is possible to discern (relatively) consistently applied principles. There is, though, a degree of unpredictability about the outcome of any particular decision. In a sense, this is unsurprising, as it is the job of tribunals to make a factual determination as to the perceptions of consumers across a wide and differing range of markets. There is also the added difficulty that judges and adjudicators are forced (quite rightly) to verbalise in a systematic way a comparison that consumers are making instinctively and holistically. What is particularly noticeable though is just how subjective the process is. Tribunals seldom make reference to objective ‘rules’ (save for the occasional reference to phonetic principles) or reference works, such as dictionaries. While it is desirable that judging the comparison of marks should not be turned into an overly complex and expensive evidence-intensive process, the complete lack of an objective benchmark can lead to generalisations as to the meaning of marks that are overly wide and the creation of ‘rules’ which bear little relation to the reality of consumer perception.

324 325

Ferring v OHMI (n 140), [67]–[68]. SABEL v Puma (n 2).

3 Composite Marks 1. What are 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,1 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 LIFE2 and BIMBO DOUGHNUTS.3 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 BECKER4 was treated as a composite mark, and outside the context of confusion, HAVE A BREAK, HAVE A KIT KAT5 was also labelled as a composite mark. Equally well, marks consisting of two figurative elements can be composite marks, as was the case with the combination of the Levi’s pocket stitching and red tab.6 Understanding the boundary between marks which are composite ones and those which are not is difficult: why for example was BARBARA BECKER treated as a composite mark, but no mention made of the term in a case involving the mark PETER STORM?7 Arguably the distinction between marks which are composite marks, and those which are not is not quite as important as one might think because the case law on composite marks is essentially an application of the principles laid down in SABEL8 in relation to comparing all forms of marks, that is that the comparison should be a global one, taking into account all relevant aspects of the marks in question, but at the same time acknowledging that consumers will pay particular attention

1 See, e.g., D. Keeling, D. Llewelyn, J. Mellor, T. Moody-Stuart QC, I. Berkeley, A. Chantirelle, and W. Duncan, Kerly’s Law of Trade Marks and Trade Names (16th edn, Sweet & Maxwell, 2017), §11-089. 2 Case C-120/04 Medion AG v Thomson multimedia Sales Germany & Austria GmbH EU:C:2005:594. 3 Case C-591/12 P Bimbo v OHIM EU:C:2014:305. 4 Case C-51/09 P Becker v Harman International Industries EU:C:2010:368. 5 Case C-353/03 Societe des Produits Nestle SA v Mars UK Ltd EU:C:2005:432. 6 Case C-12/12 Colloseum Holding AG v Levi Strauss & Co EU:C:2013:253. 7 Case T-30/09 Engelhorn v OHIM EU:T:2010:298. 8 Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport (CJEU) EU:C:1997:528.

68 Composite Marks to the distinctive and dominant aspects of marks. Nevertheless, a significant body of case law (which will be discussed in this chapter) has arisen which engages with the particular problems of applying the SABEL principles to composite marks. Having a clear definition of composite marks would ensure that all cases to which those principles should apply can be treated under that line of case law, and that like types of marks are treated consistently. Interestingly, a similarly wide approach to composite marks is taken in the USA. According to the Trademark Manual of Examining Procedure,9 a composite mark ‘may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements’. This inclusive definition would seem to have the advantage of including any mark which has two or more elements, eliminating some of the difficulties of defining the exact contours of what constitutes a composite mark.

2. General Principles In judging whether trade marks are similar the correct comparison is between the senior trade mark as registered and the junior trade mark used or depicted in the application for registration. However, it is the nature of consumers that they are drawn to certain aspects of marks more than others. Thus, the Court of Justice of the European Union (CJEU) in SABEL has instructed that, in comparing marks, particular attention should be paid to the distinctive and dominant elements of the two marks.10 The CJEU’s approach, while laudable for trying to capture how consumers process information, has caused considerable confusion as it seems to ask those comparing marks to do two contradictory things: (i) look at the entirety of the mark; (ii) pay attention to certain constituent elements of the mark. This is particularly difficult in the case of composite marks, where certain elements may be pointing towards confusing similarity whereas others may have nothing in common, begging the question of how much weight should be awarded to each of the elements of the marks. This analysis is further complicated by the fact that there are degrees of dominance, ranging from dominant to non-dominant to negligible, as well as a multifaceted analysis of both the distinctiveness and the prominence of the elements of a mark and there are also degrees of similarity ranging from highly to average to slightly to none. The CJEU has attempted to elaborate on its approach in a line of cases, although how to implement the principles adumbrated by the court remains far from clear.

9 Trademark Manual of Examining Procedure (October 2017), available from , §1213.02. The TMEP is published by the United States Patent and Trademark Office and is designed to provide USPTO trade mark examiners, attorneys, and trade mark applicants’ representatives with information on the registration practices of the USPTO. 10 SABEL (n 8), [23]; Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV EU:C:1999:323.

General Principles 69

2.1 Matratzen The focus on the distinctive and dominant elements of marks in making the comparison was stressed in the context of composite marks by the CJEU in Matratzen. There the court upheld a General Court (GC) decision finding similarity between the senior word mark, MATRATZEN, and this junior word and device mark in Figure 3.1:

Figure 3.1 Junior mark

The GC found this similarity on the basis of the shared MATRATZEN element, even though the junior mark contained a number of differences, namely the image of a person carrying a mattress and the words ‘markt’ and ‘concord’.11 This was unsuccessfully challenged before the CJEU on the basis that, in focusing on the MATRATZEN element, the GC had failed to consider the mark as a whole. The CJEU explained the correct process thus:‘the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole’. It also held that that does not mean that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components.12 The GC had in fact undertaken that process, and had spent considerable time analysing the properties of all of the elements of the junior composite mark to work out which was dominant.13

11 Case T-6/01 Matratzen Concord v OHMI EU:T:2002:261. 12 Case C-3/03 P Matratzen Concord v OHIM EU:C:2004:233, [32]. 13 Matratzen v OHMI (GC) (n 11), [38]–[43]: ‘markt’ was marginal because of its position and the figurative element was descriptive and therefore could not dominate. This left ‘matratzen’ and ‘Concord’, both of which were distinctive as Spanish consumers would not be familiar with the descriptive German meaning of the term ‘matratzen’. Of these two, ‘matratzen’ was said to dominate because it had a ‘preponderance of consonants with hard pronunciation’ and bore no resemblance to any Spanish word.

70 Composite Marks

2.2 Medion Lest it be thought that it is sufficient to focus on the dominant element(s) in comparing two marks, the CJEU in Medion14 made it clear that, although the dominant elements are particularly important, the comparison must take into account the mark as a whole. This involves considering not only those elements which are dominant, but also those elements which have an ‘independent distinctive role’ in the composite sign. In Medion the CJEU dismissed the German ‘prägetheorie’ approach to comparing composite marks. Although this theory purported to focus on the overall impression conveyed by the marks, it called on decision makers to ascertain whether the shared element of the composite mark ‘characterises the composite mark to the extent that the other components are largely secondary to the overall impression’.15 Confusion would only be present when it did—in other words—where the shared element was the dominant element of the mark. A shared element that did not dominate, but contributed to the overall impression or maintained an independent distinctive role would not lead to confusion. In Medion, the senior mark was LIFE. The junior mark was THOMSON LIFE, with THOMSON being the name of the company using the junior mark. The approach under ‘prägetheorie’ was that THOMSON would characterise the mark (presumably because it was a well-known company) and so the coincidence of the LIFE element could not lead to confusion. Indeed, the approach in relation to the sector concerned, electronics, was that the name of the manufacturer would always characterise the composite mark. This has the obvious and undesirable result that a junior user could ‘swamp’ a senior mark merely by adding its company name as this would be sufficient to prevent confusion. The CJEU rejected the German approach as depriving trade mark owners of the benefits of their distinctive marks16 (e.g., LIFE was a highly distinctive mark in relation to electronics—it was only the combination with the well-known company name which meant that it did not dominate) and allowing junior users to avoid infringement merely by adding their company name.17 Instead, a global appreciation of each of the marks as a whole called for a consideration not just of the dominant component of a composite mark, but also of the consideration of other elements which had an independent distinctive role in the composite sign, even though they were not dominant.18 While the Medion approach does represent a more nuanced approach than ‘prägetheorie’, in that it genuinely attempts to compare the marks as a whole, rather than to apply a formalistic test, it leaves open two difficult questions: (1) when will a mark have independent distinctive character, rather than being dominant or even negligible; and (2) how much weight should be placed on an element with independent distinctive character, as opposed to one which dominates the mark?

14 Medion v Thomson (n 2). 15

Ibid,  [8]‌. Ibid, [32]–[33]. 17 Ibid, [35]. 18 Ibid, [28]–[31]. 16

General Principles 71

2.3 Shaker The process of working out which element is dominant can be a complicated one, as can be seen in Shaker.19 The senior mark was LIMONCELLO and the junior sign was as shown in Figure 3.2.

Figure 3.2 Junior sign

One might be forgiven for thinking after Matratzen that the comparison should proceed on the basis that the dominant element is LIMONCELLO, rendering the two marks similar. However, the CJEU stressed that it is illegitimate to take just one component of a composite trade mark and to compare it with another mark. Instead, the marks must be examined as a whole.20 While it was true to say that the overall impression of a mark might be dominated by one of its components, this did not mean that the other elements could be ignored unless those elements were ‘negligible’.21 Thus, the GC’s decision, which had in fact treated the lemon-rimmed plate as dominant and had ignored the other elements, resulting in the marks being found dissimilar, was referred back to the GC.

2.4 Overview Taken together, these cases suggest that there is a difficult balance going on, with the CJEU aiming to both capture the elements of marks that consumers pay most attention to while at the same time, not ignoring those elements that will come to the attention of consumers.22 The aim of this chapter is to try to establish when elements of composite marks are dominant, when they are negligible, and when they are somewhere in between. 19 Case C-334/05 P OHIM v Shaker EU:C:2007:333. 20 Ibid, [41]. 21 Ibid, [42]. 22 On the difficulties see P. Frassi, ‘The European Court of Justice Rules on the Likelihood of Confusion Concerning Composite Trade Marks: Moving Towards an Analytical Approach’(2006) 37 IIC 438.

72 Composite Marks

2.5 Unitary Wholes: an Antidote to Dominance? While the CJEU’s normal approach has been to ‘rank’ the components of composite marks based on their relative impact on consumers, the court has sometimes upheld decisions which focus on the mark as a whole, rather than breaking it down into its component elements. Thus, in relation to the mark BARBARA BECKER23 (applied for by the former wife of German tennis player Boris Becker), rather than treating the surname as dominant and distinctive, the CJEU overturned a GC decision that attributed greater distinctiveness to the surname and thus found a likelihood of confusion with the mark BECKER. The CJEU found that the GC had engaged in a rote application of the case law, without considering the particular factual context before it, including that Barbara Becker was famous in her own right.24 Outside the context of names, in Perfetti van Melle v OHIM, the CJEU envisaged a composite mark that ‘produces a whole that is conceptually different from the [senior] mark’25 and so does not cause confusion with a senior mark consisting of just one component.26 However, in that case, CENTER SHOCK was not that sort of mark as CENTER was distinctive while SHOCK had little meaning. Thus, it could be confused with the senior mark CENTER.27 The CJEU gave its most explicit guidance on this issue in Bimbo Doughnuts,28 where, after stating the position on distinctive and dominant components it observed ‘a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately’.29 Once again though, on the facts of that case, the mark in question BIMBO DOUGHNUTS did not form such a unitary whole as, while BIMBO was dominant, DOUGHNUTS was not negligible as it would not be understood by Spanish consumers and also would not form a ‘unit’ with the term BIMBO.30 Again, the CJEU is trying to engage in the difficult task of articulating how consumers perceive marks. Viewing certain composite marks as ‘unitary wholes’ that should not be broken up into their respective components undoubtedly does reflect how consumers see certain marks and is in line with the principle that consumers view trade marks as a whole. The difficulty (and what the CJEU has failed to articulate) is determining in which situations consumers will view marks as ‘unitary whole’ and in which they will be inclined to give weight to each of the mark’s individual components.

2.6 Distinctive and Dominant is Not the Same as Distinctiveness Sometimes the phraseology used by the courts is that consumers pay particular attention to the ‘distinctive and dominant’ components of marks. As the CJEU has

23 Becker v Harman (n 4). 24

Ibid, [35]–[40]. Case C-353/09 P Perfetti Van Melle v OHIM EU:C:2011:73, [37]. 26 Ibid, [37]. 27 Ibid, [37]. 28 Bimbo v OHIM (n 3). 29 Ibid, [25]. 30 Ibid, [26]–[29]. 25

General Principles 73 noted,31 this is different from distinctiveness of the mark as a whole. The latter form of distinctiveness, as well as being relevant to registrability, is said to make confusion more likely. However, in the context of composite marks, distinctiveness is used to identify the element or elements of a mark that will ‘stand out’ most to relevant consumers. The fact that the meaning of a term is distinctive, in the sense that it is unrelated to the good or services in question, may contribute to it being distinctive and dominant, but equally well, purely descriptive terms can be distinctive and dominant given particularly prominent positioning, sizing, or colouring etc.

2.7 Distinctive Versus Dominant TheEUIPO differentiates between elements which stand out to consumers because they are distinctive and those which stand out to consumers because they are dominant. Distinctiveness will be influenced by the inherent meaning of the component or by any reputation that has been acquired through use.32 Dominance will depend on the visual impact of the element of the composite mark compared to other elements of the mark, and will be influenced by factors such as relative size, colour, and position.33 In practice, the distinction between distinctiveness and dominance makes little difference to the analysis as either of them can cause an element of a composite mark to be noticed by consumers more than the other element and so to have a greater influence in the assessment of similarity of marks.

2.8 Levels of Importance in the Similarity Analysis In the light of the case law, it is broadly possible to divide elements of composite trade marks into three categories, dependent on the influence that they have on the similarity of marks analysis: • Dominant elements—these elements, described in particular in Matratzen,34 have the greatest impact on how consumers perceive marks, and therefore they play the greatest role when two marks are compared. Dominance35 may come from the inherent distinctiveness of the element as compared to the goods or services in question, but it may equally result from, for example, the size or position of the element in relation to the rest of the mark. If, and only if, all the other elements of a composite mark are negligible, the comparison of signs can be conducted using only the dominant elements of the mark alone. 31 Case C-235/05 P L’Oréal v OHIM EU:C:2006:271, [43]. 32 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch. 5, p. 6. 33 EUIPO Guidelines, Part C, section 2, ch. 4, p. 26. See, e.g., Case T-384/13 Intermark v OHMI EU:T:2015:158, [37], where COLA was said to dominate on grounds of its size and position, even though it clearly would not be distinctive. 34 Matratzen v OHMI (GC) (n 11). 35 Although as previously stated, the EUIPO refers to this as ‘distinctiveness’.

74 Composite Marks • Elements with independent distinctive character—these elements, described in Medion,36 are elements that do not dominate the overall impression given by the mark, but at the same time have an independent distinctive role in the composite mark so that similarities between these elements and those in the other sign can lead consumers to incorrectly believe that the goods or services bearing the mark originate with the same undertaking. • Negligible elements—these elements, described in Shaker,37 have no effect on consumers’ beliefs as to the origin of the goods and thus can be ignored for the purposes of comparing signs. One of the key difficulties in composite mark cases is establishing which elements are negligible, and which have a weak but independently distinctive character. Below are some examples which illustrate the approach of the courts to negligible elements (Table 3.1)38 and those with independent distinctive character (Table 3.2).39 Table 3.1 Examples of elements which are negligible MARK

NEGLIGIBLE ELEMENT Figurative elements

Figurative element

‘by missako’ verbal element

36 Medion v Thomson (n 2), [30]–[31]. See also Case C-193/06 P Nestlé v OHIM EU:C:2007:539, [42] and [45]. 37 OHIM v Shaker (n 19). 38 Case T-131/09 Farmeco v OHMI EU:T:2010:458; Case T-383/12 Ferienhauser zem See v OHIM EU:T:2014:12; Case T-162/08 Frag Comercio Internacional v OHMI EU:T:2009:432; Case T- 533/ 12 IBSolution v OHMI EU:T:2013:582; Case T-715/13 Lidl Stiftung v OHMI EU:T:2015:256, [39]; Case T-341/13 Groupe Léa Nature v OHMI EU:T:2014:802, [75]–[76]. 39 Waseem Ghias (t/a Griller) v Mohammed Ikram (t/a The Griller Original) and others [2012] EWPCC 3; Case T- 118/07 PPTV v OHIM EU:T:2011:58; Case T-487/12 Eckes-Granini v OHIM EU:T:2013:637; Case T-353/11 Event v

General Principles 75 Table 3.1 Continued MARK

NEGLIGIBLE ELEMENT Rhombus devices; rectangle between ‘I’ and ‘B’

Accent on the letter ‘o’; font

Apostrophe; black and white frame

As a general rule, it seems that an element of a composite mark which has semantic content will not be negligible. In the examples in Table 3.2, figurative elements which represented something, even if small, were held not to be negligible. The same was true of the verbal element in EVENTER which, although comparatively small, would be noticed by consumers. Mere geometric and abstract shapes are more likely to be negligible, although CORONA demonstrates that this is not an absolute rule. Also, verbal elements which go unnoticed by consumers, as per the GREEN BY MISSAKO trade mark will also be negligible.

OHMI EU:T:2013:147; Case T-357/10 Kraft Foods Schweiz v OHMI EU:T:2012:312; Nature’s Gift International, Inc v Merck Consumer Healthcare Ltd, Trade Marks Registry (Opposition), O/383/15, [32]; Case T-398/16 Starbucks v EUIPO EU:T:2018:4, [57]; Case T-122/13 Laboratoires Polive v OHMI EU:T:2014:863, [35].

76 Composite Marks Table 3.2 Examples of elements which have independent distinctive character (i.e. neither dominant nor negligible) MARK

NON- NEGLIGIBLE ELEMENT Figurative element

Figurative element

Figurative element

‘Event management systems’

Figurative element

‘Sun-ray’ device

General Principles 77 Table 3.2 Continued MARK

NON- NEGLIGIBLE ELEMENT Word ‘coffee’; shape of mark

Figurative element

2.9 Partial Identity One of the keys to understanding Matratzen is that in that case the GC applied (and the CJEU upheld the application of) a rule that marks are presumptively similar where they are partially identical with regard to one or more aspects. In Matrazen, this partial identity came from the fact that both marks contained the term ‘Matratzen’. The origins of this rule are unclear. It first seems to have been formulated in Matratzen, though no source or reasoned explanation is offered. It has been consistently applied by the GC40 and is also documented in the EUIPO Guidelines.41 The rule does not appear to have gained much traction before the CJEU, although decisions where it has been applied (including Matratzen) have been upheld. Examples where marks have been found similar on the basis of partial identity include:

40

Case T-286/02 Oriental Kitchen v OHMI EU:T:2003:311, [38] onwards.

41 EUIPO Guidelines, Part C, section 2, ch. 4, p.10.

78 Composite Marks • MOU and KIAP MOU.42 • Various word and figurative marks containing the term DONUT and HOUSE OF DONUTS word and device mark.43 • VOGUE and TEEN VOGUE.44 • WINGS and ASNA WINGS.45 The rule is attractive in terms of procedural economy. The use of the terminology of identity of marks also provides significant rhetorical force, given the (at least prima facie) strong protection offered in ‘double identity’ cases. However, the extent to which it reflects consumer perception is questionable. Where signs are partially similar, by definition, they are also partially different. What this rule fails to capture is the extent to which such differences may counteract the effect of any identity. While this balance may be partially made where the identical elements are dominant,46 unless the non- identical elements are negligible, it is unsafe to automatically presume marks are similar where they are partially identical. Even where the presumption is not automatic, and the court has considered the other elements of the sign, characterising the shared elements as partially identical seems to skew the analysis in favour of finding similarity.47

3. The Principles in Practice The next section of this chapter seeks to explain how the courts and tribunals have applied these general principles to specific types of composite marks.

3.1 Word or Device Element Dominates? 3.1.1 Verbal Element Dominates Where a mark is composed of verbal and figurative elements, it is generally the case that the word element dominates. Although this is not a rule of law, courts have generally assumed that consumers will pay more attention to verbal elements, over those which are figurative.48 The GC justified this approach in SELINIUM-ACE stating: where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average

42 Oriental Kitchen v OHMI (n 40). 43 Case T-333/04 House of Donuts v OHMI EU:T:2007:105. 44 Case T-509/12 Advance Magazine Publishers v OHMI EU:T:2014:89. 45 Case T-382/16 Asna v EUIPO (Asna Wings/Wings) EU:T:2017:713, [73]. 46 See the discussion in Case C-23/09 ecoblue AG v OHIM EU:C:2010:35, [45]–[50]. 47 E.g., Case T-60/10 Jackson International v OHMI EU:T:2012:348, [28]; Case T-529/11 Evonik Industries v OHMI EU:T:2012:598, [31]. 48 Case T-312/03 Wassen International v OHMI EU:T:2005:289, [37], Case T-205/06 NewSoft Technology v OHMI EU:T:2008:163, [54]; Case T-569/11 Gitana v OHIM EU:T:2013:462, [56].

The Principles in Practice 79 consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark.

This reasoning would seem to apply most directly to the aural aspect of marks, and does not fully explain why verbal elements should dominate the visual aspect of marks, though it seems reasonable to presume that consumers seeing a composite figurative and verbal mark will be drawn to the verbal element because there is a recognised system for processing words, whereas perceptions of images are more impressionistic. Examples49 where the verbal element has dominated include those in Figures 3.3 to 3.5:

Figure 3.3 Senior mark

Figure 3.4 Senior mark

Figure 3.5 Junior mark(left); senior mark (right)

The verbal element is particularly likely to dominate where the figurative element is banal or decorative.50 Figurative elements are often abstract aspects of stylisation without clear meaning, and as such may be negligible to the overall impression the 49 Case T-205/06 NewSoft Technology Corp v EUIPO EU:T:2008:163; Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2014] EWHC 185 (Ch); Case T-76/13 Compagnie des montres Longines, Francillon v OHMI EU:T:2015:94, [49] (verbal element dominated in both junior and senior marks). 50 Case T-457/15 Fakro sp. z o.o. v EUIPO EU:T:2017:391, [61] (figurative element resembling a blind or curtain).

80 Composite Marks mark creates on consumers. Even where such figurative elements are not classed as negligible, their impact on consumers is likely to be low. This was the case in IBSolution v OHIM, where the figurative elements of the senior mark (Figure 3.6) were described as ‘common geometric shapes which have no independent evocative force and which are not, by reason of their size or originality, particularly inventive or striking’.51 This meant that the letters IBS were dominant and the mark as whole was similar to the applied for word mark IBSolution.

Figure 3.6 Senior mark

Similarly, in relation to the mark in Figure 3.7, the figurative element was described as ‘commonplace’:52

Figure 3.7 Junior mark

Thus, the mark was similar to the word mark KICKERS. In Figure 3.8,53 the figurative element was said to highlight the verbal element, which was therefore dominant:

Figure 3.8 Senior mark

51 IBSolution v OHMI (n 38), [34]. 52 53

Case T-537/11 Hultafors Group v OHMI EU:T:2013:207, [36]. Case T-600/11 Schuhhaus Dielmann v OHMI EU:T:2014:33, [43]–[44].

The Principles in Practice 81 In Premier Polish v OHIM, the GC stressed that, while the figurative elements of a line and a stylised flower (Figure 3.9) could not be ignored, they were banal and so had no semantic content and would not make an impression on consumers.54

Figure 3.9 Senior mark

3.1.2 ...But Sometimes the Figurative Element Dominates As the CJEU has observed,55 it is merely a presumption that word elements dominate, and not a rule of law. Thus, there are a significant number of cases where the figurative element was dominant. In some instances, the fact that the verbal element is descriptive has meant that the figurative element dominates, particularly where that figurative element is particularly original or striking. Examples include the marks in Figure 3.10,56 registered for Classes 3 and 5, where the figurative element of an outline of a fir tree was dominant over the verbal elements CAR-FRESHNER and ‘ARBRE MAGIQUE’ (meaning ‘magic tree’):

Figure 3.10 Senior marks

54 Case T-361/12 Premiere Polish v OHIM EU:T:2013:630, [35]. 55 Case C-488/06 P L&D v OHIM EU:C:2008:420, [84]. See also Case T-3/04 Simonds Farsons Cisk v OHMI EU:T:2005:418, [45] and the warning from Mr Purvis QC, sitting as Appointed Person in Tictrac Ltd v United Digital Group GmbH, Trade Marks Registry (Appointed Person), O/223/18, [16], who labels the presumption ‘a dangerous shortcut’. 56 L&D v OHIM (n 55).

82 Composite Marks This meant the earlier mark was confusingly similar to a sign consisting of just the outline for a fir tree, applied for in Class 5. Conversely, if the figurative element is particularly distinctive, it can dominate over the verbal element. In Figure 3.1157, the junior figurative element was said to evoke a ‘sense of order of modularity’, except for one square which was out of alignment. This was said to be ‘unusual’ and to have a ‘relatively high’ level of intrinsic distinctiveness,58 unlike the verbal element, IDEA.

Figure 3.11 Junior mark (left); senior mark (right)

Consequently, the mark was visually dissimilar to the IKEA word and device mark, and while aural similarity was found, overall the two marks were found to be dissimilar. Similarly, in Figure 3.12,59 the figurative elements were said to be ‘distinctive and original’ and so were dominant. Consequently, this mark was visually and conceptually dissimilar to the earlier word mark KINNIE, and this outweighed any phonetic similarity.

Figure 3.12 Junior mark

57

Case T-112/06 Inter-Ikea v OHMI EU:T:2008:10.

58 Ibid, [50].

59 Simonds Farsons Cisk v OHMI (n 55), [49].

The Principles in Practice 83 In other instances, the relative sizes of the verbal and figurative elements has meant that the figurative element dominates. Thus, Figure 3.13,60 the figurative element dominated because of its size compared to the verbal element and its position above the verbal element:

Figure 3.13 Junior mark

Consequently, the sign was visually and aurally dissimilar to a mark consisting of the term DUSCHO HARMONY in stylised script. The fact that the main basis of comparison was the dominant word mark in the DUSCHO HARMONY mark and the figurative mark in the DUSCHY mark played a significant role in visually distinguishing the two.61 Likewise, in Figure 3.14,62 the ‘protuberant size’ of the bull element of this mark meant that the figurative element was dominant:

Figure 3.14 Junior mark

60

Case T-295/11 Duscholux Ibérica v OHMI EU:T:2012:420.

62

Case T-350/13 Jordi Nogues v EUIPO EU:T:2017:633, [30].

61 Ibid, [67].

84 Composite Marks The larger relative size of the figurative element meant that it dominated (Figure 3.15): 63

Figure 3.15 Junior mark

Similarly, in Figure 3.16,64 the figurative elements were dominant because the globe ‘immediately attracts attention’, was larger than the lettering and was surrounded by an outline which was thicker than the outline of the lettering.65 Consequently, the mark was visually dissimilar to the senior mark consisting of the word METRO in yellow letters.

Figure 3.16 Junior mark (left; senior mark (right)

It should be noted that in many of the cases where the figurative element dominates, although there is resultant visual dissimilarity, the marks will frequently not be dissimilar overall.66 This is because on the aural comparison, consumers are forced to compare the verbal elements of the two marks, even if they are the least prominent part of the mark(s) as the figurative element is seldom articulated. An infamous example of this is Claudia Oberhauser v OHIM,67 where the junior application was for the word FIFTIES, while the senior mark consisted of a label shape with the central words MISS FIFTIES and in smaller letters ECCELLENTA NELLA TRADIZIONE. Above the verbal element was an image of a group of men having a ‘tug of war’ with a pair of jeans while below the verbal element was an image of a surprised looking jeans-clad female. While the marks were found to not be visually similar,68 there was 63 Tictrac v United Digital (n 55), [17]. 64 Case T-290/07 MIP Metro Group Intellectual Property GmbH & Co KG v OHIM EU:T:2008:562. 65 Ibid, [44]. 66 This would not be the case though where the verbal element is negligible and so will not be noticed, let alone pronounced, by relevant consumers. 67 Case T-104/01 Oberhauser v OHIM EU:T:2002:262. See the criticism of this case in J. Phillips, Trade Mark Law: A Practical Anatomy (OUP, 2003), [10.32]. 68 Oddly, the GC described the verbal element as ‘predominant’ for the entirety of the comparison of marks, though it implicitly does not seem to have proceeded on that basis when conducting the visual analysis (see [36] and [38]).

The Principles in Practice 85 aural and conceptual similarity because the dominant verbal element of the senior mark contained the entirety of the junior sign.69 The importance of this is that once aural (and indeed in relevant cases, conceptual) similarity is present it is difficult for courts to dismiss the decision at that point. Since at least a low level of similarity of signs is present, tribunals will be forced to consider similarity of goods and overall confusion, even when the marks are visually dissimilar to a seemingly fatal degree. 3.1.3 . . .and Sometimes Neither Dominates Perhaps the most difficult cases are those where neither the verbal nor the figurative element dominates the mark. In such cases, the analysis is inevitably made on a case- by-case basis and so does not lend itself to precise description.70 To add to the complication, the fact that neither of the two elements dominates does not inevitably mean that they are both of equal weight. Moreover, their weight may vary on the aspect of the marks being considered (e.g. verbal elements will be of greater prominence in the aural comparison). A similar phenomenon is apparent where, even though one element of the mark is dominant, the other elements are not negligible. In such a case, both the dominant and non-dominant elements enter in the comparison and their contributions towards similarity or dissimilarity must be balanced. Presumably the dominant element should make a presumptively greater contribution towards this finding, but other than that the precise contribution made by each element of the mark must be considered on a case-by-case basis and cannot be described ex ante. 3.1.4 Figurative Elements which Complement Verbal Elements Where the figurative and verbal elements express the same idea, the courts have found that neither element dominates since the public will recall the two elements in equal measure. For example, the two elements of a mark consisting of the word HORSE and a picture of a horse were found to be of equal impact. The same was true of the other sign in that case which consisted of the words HORSE COTURE and a stylised image of a horse.71 In Alticor Inc v Nutrigreen Health Products Ltd,72 what the Hearing Officer called the ‘synthesis’ of the two conceptually related elements and their content and arrangement formed the dominant and distinctive element of the mark, meaning that they both contributed to the overall visual impact of the mark. Consequently, the mark (Figure 3.17) was not similar to the applied for word mark NUTRILITE because to find similarity would have effectively meant ignoring the equally dominant figurative element of the senior mark.73

69 Oberhauser v OHIM (n 67), [40]–[45]. See also the discussion in Case T-143/11 Consorzio vino Chianti Classico v OHIM EU:T:2012:645, [44]. 70 See, e.g., Case T-377/10 Preparados Alimenticios v OHMI EU:T:2013:600; Kraft v OHMI (n 39); Consorzio v OHIM (n 69); Eckes-Granini v OHIM (n 39); Case T-608/13 easyGroup IP Licensing v OHMI EU:T:2015:282, [41]. 71 Case T-238/10 Scatizza v OHMI—Jacinto (Horse Couture) EU:T:2011:613 [26] and [27]. 72 Alticor Inc v Nutrigreen Health Products Ltd, Trade Marks Registry (Appointed Person), O/335/07, [38]. 73 Ibid, [47].

86 Composite Marks

Figure 3.17 Senior mark

3.2 Comparing Words and Devices A word mark can be similar to a word and device mark. This is particularly the case where the device element is negligible, or at least does not dominate the composite mark. Very often such device elements are particular typefaces or ‘flourishes’. This issue has largely arisen in the context of the visual aspect of the comparison because, in principle, figurative elements can look very different from merely verbal elements. However, the GC has repeatedly stated that ‘there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression’.74 Examples75 where the figurative contribution was really quite minor include Figures 3.18 and 3.19: versus BOTUMAX Figure 3.18

versus COMIT Figure 3.19

The figurative element made a more substantial contribution (and so was not negligible) and yet did not prevent similarity in the examples76 in Figures 3.20, 3.21, and 3.22: 74 E.g., Case T-359/02 Chum v OHIM EU:T:2005:156, [43]; Farmeco v OHMI (n 38), [34]. 75 Farmeco v OHMI (n 38); Case T-84/08 Intesa Sanpaolo SpA v OHMI EU:T:2011:144. 76 Case T-203/09 Olymp Bezner GmbH & Co KG v OHMI EU:T:2011:195; Chum v OHIM (n 74); Evonik v OHIM (n 47).

The Principles in Practice 87

versus OLYMP Figure 3.20

versus STAR TV

Figure 3.21

versus IMPULSO CREADOR Figure 3.22

What arguably skews the comparison once again is that while there are clear visual differences between these marks, when it comes to the aural analysis in particular, consumers can only rely on the verbal element of the figurative mark, meaning that aural similarity is essentially a given.

3.3 Descriptive Elements Where an element of a mark is descriptive, it is unlikely to dominate the mark.77 This rule is not immutable though, as a descriptive element can still dominate if it is particularly prominent in size, positioning, or colouring etc.78 Inevitably, a descriptive element will also be at the forefront of the analysis if the mark or marks are made up primarily 77 See Case T-129/01 José Alejandro v OHIM EU:T:2003:184, [53]; Case T- 117/ 03 New Look v OHIM EU:T:2004:293, [34]. 78 See, e.g., Case T-395/12 Fetim v OHMI EU:T:2015:92, [32] (word element SOLID FLOOR dominated on account of position and size).

88 Composite Marks of descriptive elements.79 The approach taken by the EUIPO is that the consideration of whether an element of a mark is distinctive should be conducted separately from that of whether an element of a mark is dominant since the two are separately enumerated in SABEL.80 This though does not appear to be the practice of the GC, or of other tribunals. Indeed, it is hard to see the utility of a separate distinctiveness analysis since the purpose of both the distinctiveness analysis and that of other factors suggesting dominance is to determine which element consumers will pay most attention to, and indeed often the two concerns may interact (e.g. a descriptive element that is in small writing is unlikely to dominate). In CM Capital Markets Holding, SA v OHIM81 the GC took the approach that descriptive elements are generally not dominant, unless their position or size makes a particular impression on consumers. Equally well, descriptive elements are not automatically negligible.82 Thus, in relation to the junior mark shown in Figure 3.23, the term ‘CARBON CAPITAL MARKETS’ did not dominate:83

Figure 3.23 Junior mark

Equally, in relation to the senior mark shown in Figure 3.24, although the term ‘CAPITAL MARKETS’ was descriptive and so did not dominate, it was still a ‘relevant element’ for the purposes of the comparison of marks because it was ‘prominent, visually’, presumably because of its size:84

Figure 3.24 Senior mark 79 See, e.g., Ghias v Ikram (n 39) (GRILLER & device/GRILLER Chicken n Pizza & device versus GRILLER— both in relation to restaurants). 80 SABEL (n 8), [23]. Thus, the EUIPO Guidelines contain separate chapters in relation to the distinctive components of marks and the dominant components of marks—Part C, Section 2, chapters 5 and 4, respectively. 81 Case T-490/08 CM Capital Markets v OHMI EU:T:2010:250. 82 Ibid, [39]. See also Case T-273/10 Olive Line International v OHMI EU:T:2012:246, [62], where the term ‘olive’ for goods containing olives neither dominated nor was negligible in a senior mark consisting of the words OLIVE LINE and an olive leaf device. The coincidence of the term ‘olive’ means that the mark was similar to a junior application consisting of the term O.LIVE in a black box with an olive leaf. 83 CM v OHMI (n 81), [40]–[41]. 84 Ibid, [47].

The Principles in Practice 89 Similarly, although not expressed in the terms familiar from the GC’s case law, in one UK case,85 the common term SUPREME did not result in similarity of marks, in large part because of its descriptiveness. The marks in question are shown in Figure 3.25:

Figure 3.25 Senior mark (left); junior mark (right)

In another UK case (marks shown in Figure 3.26),86 Birss J overturned the Hearing Officer’s finding of similarity of marks because the elements in common, namely the words ‘vape’ and ‘co’ were descriptive, meaning that there was no overall likelihood of confusion:

Figure 3.26 Senior mark (left); junior mark (right)

There are numerous examples of cases where an element of a composite mark did not dominate because it was descriptive. These include: • Where the marks at issue were various word and device marks containing the term SEVEN versus a word and device mark containing the term SEVEN, the number 7, and the term ‘Fashion Shoes’ for leather goods, the term fashion shoes was said to be of ‘secondary importance’ because it had low distinctive character for the goods in question. Thus, the two marks were confusingly similar.87 • BIKER MILES for clothing aimed at motorcyclists was similar to MILES since the term ‘biker’ was descriptive and therefore would not generally dominate.88 • The term NL dominated various signs consisting of ‘NL’ plus either ‘sport’, ‘jeans’, ‘active’, and ‘collection’ since all of these terms were descriptive of the clothing for

85 Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch), [185].

86 Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch), [34]–[36]. 87 88

Case T-244/10 Tsakiris-Mallas v OHMI EU:T:2012:219, [51], [54], and [56]. Case T-385/03 Miles Handelsgesellschaft International mbH v OHIM EU:T:2005:276, [44]–[46].

90 Composite Marks

which the sign was applied.89 This led to conceptual and aural similarity with the senior sign consisting of the letters ‘NL’. • PAM-PIM’S was the dominant element of PAM-PIM’S BABY PROP as the term ‘baby’ would be seen as designating the function of the applied-for goods (nappies). Thus, the mark was similar to PAM-PAM plus device.90 • P&G was the dominant element of the mark P&G PRESTIGE BEAUTE because the other words were descriptive in relation to beauty products. (Note that in this case, part of the term was laudatory, rather than descriptive of the goods in question.)91 • 360° did not dominate the mark 360° SONIC ENERGY applied for in relation to toothbrushes because 360° would be seen as a technical specification.92 Consequently, the mark was similar to the senior mark SONIC POWER.93 • BK dominated a figurative mark containing BK PARTNERS for financial services, rendering the mark similar to a figurative mark containing the letters BK.94 • The descriptiveness of the term ‘gin’ meant that GINRAW and RAW in relation to cocktail shakers were similar, despite the different beginnings.95

Care should be taken though in characterising elements of marks as descriptive, and due regard should be paid to the breadth of the specification in question to ensure that the element is descriptive for all the goods or services in question. For example, the GC annulled a decision of the EUIPO that a mark consisting of the term CHEAPFLIGHTS and a picture of an aeroplane contained descriptive elements in relation to providing search engines, telecommunication services, organising competitions, weather information services, and booking accommodation.96 Likewise, the GC annulled an EUIPO decision that GIORGIO BEVERLY HILLS was similar to GIORGIO, both in relation to clothing.97 While Beverly Hills would be known to consumers, it was not descriptive of clothing. Consequently, the BEVERLY HILLS element served to visually, aurally, and conceptually distinguish the two marks and meant that they were not confusingly similar.98 It should also be remembered that the descriptiveness (or otherwise) of an element of a mark will depend on whether the descriptive meaning of the term is known to relevant consumers. Thus, the DOUGHNUTS element of BIMBO DOUGHNUTS, registered for ‘pastry and bakery products, specially doughnuts’ played an independent distinctive role in the mark because the term was unknown to the relevant consumer,

89 New Look v OHIM (n 77), [33]–[40]. 90

Case T-133/05 Meric v OHMI EU:T:2006:247, [66]. Case T-366/07 Procter & Gamble v OHMI EU:T:2010:394, [65]. Case T-467/11 Colgate Palmolive v OHIM EU:T:2013:633, [59]–[60]. 93 Ibid, [67]. 94 Case T-228/15 Grupo de originación y análisis, S.L. v EUIPO EU:T:2016:530, [49]. 95 Case T-258/16 Mediterranean Premium Spirits, SL v EUIPO EU:T:2017:375, [38]. 96 Case T-461/09 CheapFlights International v OHMI—Cheapflights (Cheapflights avec avion noir) EU:T:2011:199. 97 Case T-228/06 Giorgio Beverly Hills v OHMI EU:T:2008:558. 98 Ibid, [25]–[32]. 91 92

The Principles in Practice 91 who was Spanish.99 However, the fact that the precise meaning of an element is ambiguous, does not necessarily prevent it from being descriptive. Thus, while the term SPIN BINGO may not be in common use, the combination of two descriptive elements which suggested a game of bingo where something was spinning, even though it was not clear what, was classed as descriptive.100 Similarly, the fact that the MIX element of the mark SPEZOOMIX, applied for beverages, might have multiple meanings did not prevent it from being considered descriptive, meaning that the earlier portion of the mark was of greater importance to the comparison with the earlier mark SPEZI.101

3.4 ‘Figleaf ’ Marks From a more principled point of view, there has been some debate regarding the correct approach where the shared elements of a composite mark are weakly distinctive. There are two issues at stake: first, will consumers pay attention to elements that have low distinctiveness; secondly, there is a risk that a trade mark owner may, by registering a mark that is composed of marks which combine distinctive and non-distinctive elements, be able to block other competitors from using similar marks which contain those non- distinctive elements in a situation where, had the trade mark owner sought to register the non-distinctive element by itself, he would have been refused registration. In the UK, Arnold J (as he then was) found in Starbucks v BskyB, where the marks being compared were NOW and NOW TV, that the shared NOW element could not give rise to a likelihood of confusion because it was only weakly distinctive.102 He objected to trade mark owners ‘registering descriptive marks under the cover of a figurative “figleaf ” of distinctiveness’103 and then seeking to enforce them against third parties seeking to use those descriptive terms. Likewise, in Supreme Petfoods,104 the same judge found that the presence of the shared non-distinctive SUPREME element could not give rise to a likelihood of confusion. Similarly, the EUIPO Convergence Programme CP5105 recommended that: • When marks share an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. It will take into account the similarities/differences and distinctiveness of the non-coinciding components. • A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. 99 Bimbo v OHIM (n 3), [27]. 100 Case T-665/13 Zitro IP v OHMI EU:T:2015:55, [34]–[37]. 101 Case T-557/14 BrandGroup GmbH v OHIM EU:T:2016:116, [36]. 102 Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Others [2012] EWHC 1842 (Ch), [120]. This case is discussed further in Chapter 6, Section 8.8. 103 Ibid, [117]. 104 Supreme Petfoods v Henry Bell (n 85). 105 Available at . Although doubts have been raised as to both the accuracy and legal authority of this document in Whyte and Mackay Ltd v Origin Wine UK Ltd & Anor [2015] EWHC 1271 (Ch), [44].

92 Composite Marks • When marks share a component with no distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. It will take into account the similarities/differences and distinctiveness of the non-coinciding components. • A coincidence only in non-distinctive components does not lead to a likelihood of confusion. Similar statements can be found in the EUIPO Guidelines.106 However, it would be a mistake to assume that elements with a low degree of distinctiveness can never give rise to likelihood of confusion and a general presumption to this effect would be misleading. Instead, the element needs to be considered in the context of the mark as a whole and how the two marks will, in practice, be viewed by consumers. Thus, a weakly distinctive element may, nevertheless, dominate the mark (and so stand out to consumers) if it is visually striking, for example, if it is particularly large compared to the other elements or is otherwise presenting in a central position or in particularly noticeable colouring or letters. Likewise, an element which is only weakly distinctive, where shared, may also lead to likelihood of confusion if the other elements of the mark are of a similarly low (or even lower) level of distinctiveness. This is the approach taken in CP5, where the point is made forcefully by various illustrative examples. It is true that this approach, in focusing on consumer perception, does little to directly address the interests of other competitors who will not want to be blocked from accessing, for example, descriptive elements of marks, but this issue is perhaps best addressed directly by robust examination and invalidity proceedings.

3.5 Allusive Elements An allusive element is also less likely to dominate a composite mark because it is of lesser distinctiveness than terms of devices which have no relation to the goods in question. The GC has explained that, analogous to descriptive words which have reduced distinctiveness and are therefore less likely to be dominant, ‘elements which have a very general meaning suggesting a positive quality attributable to a large range of different goods or services’ are also not particularly strong, and therefore are less likely to dominate composite signs.107 For example: • MILENIUM did not dominate FOCUS MILENIUM since, despite the fact that the year 2000 is long gone, the term remains allusive for ‘top range

106 EUIPO Guidelines, Part C, section 2, ch. 5. 107 Case T-356/02 Vitakraft-Werke Wührmann v OHIM EU:T:2004:292 and Case T-12/13 Sherwin-Williams Sweden v OHMI EU:T:2014:1054, [77]. Although see Home Depot Inc v Bauhaus Landgericht (Hamburg) [2005] ETMR 63, [65], where the term THE HOME DEPOT was not treated analogously to a descriptive term because of its ‘non-specific, vague content’ with regard to various construction and interior design services and goods.

The Principles in Practice 93

products’ or ‘a classic edition’, or to suggest qualities such as ‘timelessness and durability’.108 • A figurative device of a cow was identified as not being particularly distinctive in relation to chocolates and toffees because such products often contain milk, and so it was allusive. Thus, particular emphasis was put on the verbal elements of the mark.109 • The term SPORT in relation to clothing was viewed as descriptive or highly allusive, and so did not dominate a mark consisting of the term SPORT and a ‘device of two dynamic, curved brush strokes, bending towards each other in their middle, without touching’.110 • The ‘art’ element of two marks (senior mark: word mark ARTITUDE; junior mark: ARTI in a particular typeface and shade of red) did not dominate as it was allusive in relation to paints, and so was of low distinctiveness. Consequently, the two marks had only a weak level of visual and conceptual similarity and an average degree of phonetic similarity.111 • CLAN MACGREGOR was of average conceptual similarity to CLAN. The term ‘clan’ alluded to Scotland, as well as family bonds, which saved it from being entirely secondary and descriptive. Nevertheless, it did not dominate the mark.112

In adopting the approach of treating allusive elements as weakly distinctive, and thus giving them (generally) a less prominent role in the comparison of marks, the courts are arguably treating allusive marks less favourably than they do for registrability purposes, where an allusive mark would not be considered to be lacking in distinctive character for the purposes of Article 4(1)(b) TMD.

3.6 Particularly Distinctive Elements Conversely, where an element of a composite mark is particularly distinctive, such as an invented word, it is more likely to form a dominant component of the mark in question because it will be more likely to draw the attention of consumers. Thus, the dominant element of the marks shown in Figure 3.27 was the invented word KRAFFT, and the dominant element of the junior sign VITAKRAFT was KRAFT (which had no meaning in Spanish). This meant that the marks were visually and phonetically similar.113

108 Case T-357/07 Focus Magazin Verlag v OHMI EU:T:2008:581, [35] (the misspelling is present in the original trade mark). 109 Case T-623/11 Pico Food v OHMI EU:T:2014:199, [44]. 110 Case T-54/12 K2 Sports Europe v OHMI EU:T:2013:50, [26]–[31]. 111 Sherwin-Williams v OHMI (n 107), [78]–[81]. 112 Case T-250/15 Speciality Drinks Ltd v EUIPO EU:T:2016:678, [49]. 113 Vitakraft-Werke v OHIM (n 107).

94 Composite Marks

Figure 3.27 Senior mark

The same sort of analysis is inherent in Matratzen itself, where the element MATRATZEN was held to dominate the applied for word and device mark as it had no meaning in Spanish (the language of the senior mark).114 Consequently, the mark was similar to the word mark MATRATZEN.

3.7 Impact of Size, Colour, and Font Frequently, it will be the size and/or colour of an element that will cause it to dominate a composite mark, rather than its semantic content. For example, in Figure 3.28,115 the shared element TACK dominated the two marks.

Figure 3.28 Senior mark (left); junior mark (right)

In the senior mark, the TACK element was important because of its size relative to the CEYS element, the use of the colour red just for the word TACK, its typeface and position and the beginning of the sign. In relation to the junior sign, the TACK element dominated because of its typeface, blue colour, and size of its letters.116 While this decision is illustrative on a level of principle of the sorts of factors that can cause an element of a composite mark to dominate, there is a degree of inconsistency between the way in which these factors were applied between the two marks. For example, in relation to the senior mark, the colour red was important in establishing dominance, while the red ‘tessa’ element of the senior mark did not dominate. Likewise, the position at the beginning of the mark was helpful in showing dominance in relation to the senior mark, but the fact that the TACK element was at the end of the sign did not prevent it from dominating the junior sign. 114 Matratzen v OHMI (GC) (n 11), [43]. 115 Case T-555/11 tesa SE v OHMI EU:T:2012:594. It should be noted that while ‘tack’ was descriptive of the parties’ adhesive products in English, the GC found that the average Spanish consumer would not be familiar with the word and so the element was treated as being distinctive. 116 Ibid, [30].

The Principles in Practice 95 Indeed, colouring and/or sizing can enable a not particularly distinctive element to dominate a sign where it would not otherwise do so. For example, in Figure 3.29,117 the term PPTV dominated because of its size, and the fact that it was printed in bold type, even though it was registered for, inter alia, entertainment services, for which the term TV would be at descriptive:

Figure 3.29 Senior mark

Similarly, the relative size and position of the SUNPARKS and SUN PARK element meant that they dominated the two marks in Figure 3.30 and meant that they were similar, despite the additional matter that both featured.118 The GC specifically commented that the weak distinctive character of an element of a composite mark does not prevent it from being a dominant element since its position or size may cause it to make a particular impression on consumers.119

Figure 3.30 Senior mark (left); junior mark (right)

An even clearer example is shown in Figure 3.31,120 where the size of the characters and dimensions compared to the ‘les’ element meant that the not particularly distinctive element ‘pages jaunes’ dominated and the mark as a whole was similar to the applied for mark PAGESJAUNE.COM:

Figure 3.31 Junior mark

While features of size and position are essentially visual, they can impact on the aural and conceptual elements of the comparison since they determine which aspects of the mark are most likely to be pronounced and/or remembered by consumers. For example, 117 PPTV v OHMI (n 39), [48]–[49]. 118 Ferienhauser v OHMI (n 38), [57]–[61]. 119 Ibid, [56]. See also Case T-153/03 Inex v OHIM EU:T:2006:157, [32] and Case T-115/02 AVEX v OHIM EU:T:2004:234, [20]. 120 Case T-134/06 Xentral LLC v OHIM EU:T:2007:387, [53].

96 Composite Marks in relation to SUNPARKS/SUN PARK, in a sense the marks look quite different given the different font and colouring etc. However, the fact that consumers would pay attention to the dominant elements which would conjure up the idea of ‘sunny holidays and of leisure or holiday parks’ meant that the two marks had a high level of conceptual similarity.121 An opposite example can be seen in this Figure 3.32,122 where the very small size of the ‘by Misako’ element meant that it would not dominate the mark in question. Consequently, the GREEN element (which as the name of a colour is not particularly distinctive) and figurative element dominated.

Figure 3.32 Junior mark

3.8 Impact of Positioning and Spacing The positioning of an element of a composite mark can lead to it being dominant. This is particularly true if the element is enclosed in some sort of border that differentiates it from the rest of the mark. For example, in Figure 3.33,123 the inclusion of the word EDUCA inside a red box on top of the term MEMORY GAME meant that the former element dominated on account of the ‘visual dichotomy’ created between the two elements of the mark.

Figure 3.33 Junior mark 121 Ibid, [68]–[70]. 122 Frag v OHMI (n 38), [39]. 123 Case T-243/08 Ravensburger v OHIM EU:T:2010:210, [36] upheld in Case C-370/10 P Ravensburger v OHIM EU:C:2011:149.

The Principles in Practice 97 Similarly, in Figure 3.34,124 the central position of the HARRYS element meant that it was dominant.

Figure 3.34 Senior mark

Likewise, the words ‘easy credit’ dominated both the senior and junior marks in Figure 3.35125 as a consequence of their central position, leading to similarity of marks, despite the descriptiveness of the wording.

Figure 3.35 Senior mark (left); junior mark (right)

Even where the differentiation between the elements is less obvious, the positioning of an element at the beginning of a mark can contribute to its dominance. Thus, the term JULIUS dominated the mark JULIUS K9, which meant that the applied for sign was not similar to the earlier registered mark consisting of the term K9 and a stylised picture of a dog and bone.126 Similarly, the term RED dominated the marks RED X and RED Z respectively as a result of its initial position, and contributed to their being confusingly similar.127

3.9 Inclusion of Numbers Generally, numbers are considered to be of relatively low distinctiveness, and so frequently do not dominate the signs in which they are found. However, this very much depends on the other elements of the sign in question. When those other elements are descriptive, only the number can dominate, even if, inherently, it is of low distinctiveness. 124 Joined Cases T-711/13 and T-716/13 Harrys Pubar and Harry’s New York Bar v OHMI EU:T:2016:82, [89]. 125 Case T-745/14 TeamBank AG Nürnberg v EUIPO EU:T:2016:82, [42]. 126 Case T-231/12 Rocket Dog Brands v OHIM EU:T:2013:264, [29]. 127 Red Bull GmbH v Stute Nahrungsmittelwerke GmbH & Co KG, Trade Marks Registry (Appointed Person), O/119/14, [37]–[39].

98 Composite Marks Thus, in a case involving the mark SEVEN FASHION SHOES, it was the element SEVEN and the numeral 7 that dominated.128 There is an excellent example of this phenomenon in a decision involving the word and device mark CACHAÇA 51.129 ‘Cachaça’ is the Portuguese word for a spirit made from sugarcane. Thus, the term CACHAÇA was descriptive for Portuguese consumers and the number 51 dominated. However, the GC found that Spanish, UK, Austrian, and Danish consumers would be unfamiliar with the term and so, for them, CACHAÇA would dominate and 51 would be seen as denoting a property of the goods and would be negligible. Even where a number is not dominant, if it has some level of independent distinctive character, it may differentiate the mark in which it is included from a similar mark. For example, in Figure 3.36 the inclusion of the number 99 helped to differentiate between different embodiments of the term BON APPETIT.130

Figure 3.36 Junior mark (top); senior marks (bottom two marks)

Likewise, the inclusion of the number 9 helped to differentiate this mark from the earlier word mark ALKAVITAE (Figure 3.37).131

Figure 3.37 Junior mark 128 Tsakiris-Mallas v OHMI (n 87), [40]–[57]. 129 Case T-472/08 Companhia Muller de Bebidas v OHMI EU:T:2010:347, [57]–[71]. 130 Bon Catering Services v Aldi Stores, Trade Marks Registry (Appointed Person), O/411/14, [27]. The same senior mark formed the basis of an equally unsuccessful opposition in Case T-485/14 Bon Net OOD v OHMI EU:T:2006:53. 131 Alka9 Ltd v WP IP & Development BV, Trade Marks Registry (Appointed Person), O/342/14, [19].

The Principles in Practice 99 On the other hand, the inclusion of the number 1973 did not differentiate the sign ZICO1973 from the earlier word mark ZECO.132 It is submitted that what differentiates these two sets of cases is that in the earlier two cases, the inclusion of the numbers was accompanied by other striking figurative differences between the two marks, while in the latter case the other elements of the marks were two relative similar words. It may well be that, in practice at least, where the only difference is the inclusion of a number, this will be insufficient to distinguish two marks. This may be particularly so given that the mere inclusion of a number may be seen as denoting a sub-brand of the earlier mark.

3.10 Use in Conjunction with Company Names and Personal Names As is made clear in Medion, the fact that the dominant part of a mark is not reproduced in the comparator mark does not automatically mean that the marks are dissimilar. Instead, marks may still be similar where another element of the marks, which although not dominant, have independent distinctive character, coincide (or at least are similar). Company names or house marks will often form the dominant element of a composite mark due to the fact that they have been used extensively and so will be well known to consumers and hence distinctive. However, Medion, itself a case involving a company name, makes it clear that the mere fact that a mark includes a company name which dominates the mark does not automatically meant that the marks are dissimilar. Instead, the marks must be compared as a whole, taking into account also the other elements which have independent distinctive character. Whether this will result in overall similarity of marks will depend on the nature of those elements and how close they are, which is a case-by-case analysis. However, this sensible approach ensures that an undertaking cannot effectively expropriate another’s mark by adding its own company name. There are a considerable number of cases where the inclusion of the company name has not been sufficient to prevent likely confusion. For example, in Rousselon Freres v Horwood,133 the earlier registered marks included the mark SABATIER for knives. The senior user sought to have invalidated the marks which consisted of, or included, the terms JUDGE SABATIER and STELLAR SABATIER for the same goods. The judge found that, although the terms JUDGE and STELLAR were well known as kitchenware brands, and therefore dominated the junior marks, the term SABATIER retained an independent distinctive role. According to the judge, it followed inevitably from that latter finding that there was a likelihood of confusion between the senior and junior marks.134 Arguably, this case has fallen into the opposite trap from that which Medion counsels against, as the judge seems to view the coincidence of the non-dominant elements as automatically leading to similarity of marks.135

132 Millenium Jeans v Zeco, Trade Marks Registry (Appointed Person), O/400/14, [47]. 133 Rousselon Freres et CIE v Horwood Homewares Ltd [2008] EWHC 881 (Ch). 134 Ibid, [93]. 135 Although see Aveda Corp v Dabur India Ltd [2013] EWHC 589 (Ch). Arnold J ([35]) argued that Warren J fell just short of reaching this conclusion as he recognised that the ultimate test was overall confusion.

100 Composite Marks In Aveda Corp v Dabur India,136 the senior mark was AVEDA, registered for, inter alia, goods in Classes 3 and 5. The junior user, a company named Dabur India Ltd, applied to register the mark DABUR UVEDA for goods in the same classes. The Hearing Officer had found that the two marks were not likely to be confused because UVEDA (which was close to the senior AVEDA mark) was of equal prominence to DABUR and so did not dominate the junior mark. Arnold J (as he then was) found this approach to be flawed, as the Hearing Officer had failed to ask himself whether, through the eyes of the average consumer, UVEDA would have independent significance and so whether there would be a likelihood of confusion.137 Reassessing the similarity between the two marks, Arnold J found that confusion was likely. AVEDA was a mark that had been used for beauty products to a significant extent and so would be known to certain consumers. Those consumers might well misread the UVEDA element of DABUR UVEDA as AVEDA. Thus, the UVEDA element had independent significance in the DABUR UVEDA sign and its presence would lead to confusion, even when used together with the DABUR company name.138 This is an interesting case as rather than seeing the company name as clearly dominant and the additional element as significantly weaker, Arnold J used the strength of the senior mark and the similarity of the UVEDA element of the junior mark to establish what seems to be a quite high level of independent distinctiveness for that element. By using the similarity to the senior mark in order to establish the relative weight of the elements of the junior mark, this approach has the ability to skew the comparison in favour of similarity by using the strength that the senior user has established independently of the junior user in order to bolster the non-dominant element of the junior mark. The case is also interesting as it considers whether Medion applies where the non-dominant element is similar but not identical to the comparator element, concluding that it does. Although there was at least one German case suggesting that identity was necessary,139 Arnold J considered that, on the weight of the case law, and also logically, the Medion approach applied where the elements were merely similar.140 As Arnold J notes, the ultimate question behind Medion is whether confusion is likely between the two signs. The Medion approach is not an end in itself, but rather is a tool for establishing when consumers will be confused by composite marks. Article 5(1)(b) rests on the presumption that consumers may be confused by similar marks and not just by identical marks and so to introduce a requirement of identity between the non- dominant and comparator elements would amount to an artificial rule with no basis in consumer perception of trade marks and without basis in the Directive. A further example of a case where the addition of a ‘name qualifier’ did not dispel confusion is Powell v Turner.141 The claimant was a member of the band WISHBONE 136 Ibid. 137 Ibid, [48]. 138 Ibid. 139 DRILLISCH ALPHATEL Trade Mark Application [2009] ETMR 27 (noted by Arnold J in Aveda v Dabur (n 135), [25]). 140 Aveda v Dabur (n 135), [43]–[47]. 141 Powell v Turner [2013] EWHC 3242 (IPEC).

The Principles in Practice 101 ASH, which was particularly popular in the 1970s but is still performing. He was also the proprietor of an EUTM for WISHBONE ASH covering entertainment services. The defendant was a member of the band’s original line-up, but parted ways after a disagreement and began performing in a band under the name MARTIN TURNER’S WISHBONE ASH. Mr Recorder Douglas Campbell found that the defendant’s use of the ‘name qualifier’ was insufficient to prevent confusion as to whether the defendant’s band was the original WISHBONE ASH. In part this was because the relevant public often dropped the name qualifier, but even when it was used the evidence showed that consumers were confused between the two bands.142 Medion was not cited in this case, presumably because the defendant had effectively admitted that the two signs were similar and instead focused his case on whether that similarity led to confusion.143 Sometimes though, in line with the fact that likelihood of confusion should be assessed on a case-by-case basis, the presence of a ‘name qualifier’ will be sufficient to displace confusion. One reason for this is the relative strength of the name qualifier compared to the other component. For example, where the senior mark was LOFT and the applied for EUTM was ANN TAYLOR LOFT, both for clothing, the GC found that there was no likelihood of confusion.144 The LOFT element was characterised as weakly distinctive as it had a clear meaning of a form of accommodation and denoting a particular lifestyle.145 ANN TAYLOR, on the other hand, lacked meaning and so was more distinctive.146 The GC found that consumers would not connect the two because the most distinctive element of the junior sign was missing from the senior mark.147 A further example is that a UK court found that JURA ORIGIN would not be confused with ORIGIN, primarily because of the low level of distinctiveness of the ORIGIN element.148 Another reason is that sometimes the independently distinctive component used in conjunction with the company name just is not similar enough to the comparator element. An example of this is that the figurative sign ARCHER’S MACLEAN MERCURY was found to not be confusingly similar to the earlier word mark MERKUR.149 MERKUR and MERCURY contained different numbers of letters. This together with the inclusion of ARCHER’S MACLEAN meant that the visual similarity between the two was weak.150 The addition of the final letter ‘y’ on the MERCURY element meant that there were significant aural differences151 and conceptually, MERKUR would be understood by German consumers as referring to the Roman god and/or planet while mercury either would not be understood or would be recognised as the English word 142 Ibid, [119]. 143 Ibid, [106]. 144 Case T-385/09 Annco Inc v OHIM EU:T:2011:49. 145 Ibid, [32]. 146 Ibid, [37]. 147 Ibid, [48]. 148 Whyte and Mackay v Origin (n 105), [48]–[49]. 149 Case T-106/09 adp Gauselmann v OHMI EU:T:2010:380, upheld in Case C-532/10 P adp Gauselmann v OHIM EU:C:2011:433. 150 Ibid, [31]. 151 Ibid, [33].

102 Composite Marks for the metal.152 Similarly, in the UK,153 BREWDOG ELVIS JUICE was not similar enough to ELVIS because the BREWDOG element would not be seen as a house mark and did not have independent distinctive character. Consequently, BREWDOG ELVIS JUICE had to be considered as a whole as against ELVIS, and so was just not similar enough for there to be a likelihood of confusion. A slightly different situation can be seen in Becker v OHIM.154 In this case, the name BARBARA BECKER formed the entirety of the applied-for trade mark, rather than a ‘qualifier’ of another term. The GC had found that European consumers will generally consider a surname more distinctive than a forename in word marks, and therefore BECKER was the most distinctive element, rendering the junior sign similar to the earlier registered mark BECKER. However, this approach was criticised by the CJEU as involving an automatic application of the case law, without a consideration of how consumers really perceive names.155 While it may be the case that surnames often are the most distinctive part of a forename and surname combination, this cannot be presumed. To do so would not involve an individual assessment of the mark in question.156 The presumption itself was also questionable as a common surname may not be particularly distinctive, and yet to adopt this approach would allow someone holding a mark consisting of a common surname to ‘block’ use or registration of that common surname with a distinctive forename.157 Finally, as in this case, a forename and surname combination may have a combined impact on consumers which differs from that of its individual elements where the person who the name belongs to is well known, rending confusion with the surname element alone unlikely.158 To take a couple of (the authors’ own) examples, MARGARET THATCHER creates a different overall impression from THATCHER and GEORGE BUSH from BUSH, and consumers are accustomed to the combination of the two names. Thus, the assessment of confusion where a personal name is involved is a nuanced one, that takes into account not just the inherent quality of the name but also the status of the person to whom the name belongs.159 It should also be noted that a coincidence between a senior company name and a name in the junior mark may lead consumers to believe that the junior mark is a sub- brand of the senior mark owner. This may particularly be the case in, for example, the fashion industry, where there is a common practice of launching diffusion brands. Thus, a junior mark including the words ROMEO HAS A GUN BY ROMANO RICCI (Figure 3.38) was confusingly similar to the word mark RICCI, despite the fact that the

152 Ibid, [34]–[35]. 153 Brewdog plc v ABG EPE IP LLC, Trade Marks Registry (Appointed Person), O/048/18, [35]–[47]. 154 Becker v Harman (n 4). 155 Ibid, [40]. 156 Ibid, [36]. 157 Ibid, [39]. 158 Ibid, [37]. Barbara Becker was well known in Germany as the former wife of the tennis player Boris Becker. 159 For a less famous example, see Pia Hallstrom Ltd v Beale, Trade Marks Registry (Appointed Person), O/303/ 17, [23]–[34] where the Appointed Person found that PIA HAUSTROM was not confusingly similar to the senior

Conclusion 103 first four words were significantly stylised, unlike the ‘BY ROMANO RICCI’ element, which was also comparatively small:160

Figure 3.38 Junior mark

4. Conclusion Composite marks are one of the most difficult elements of the likelihood of confusion analysis. Perhaps this is unsurprising given that, by their nature, composite marks involve more components than a ‘normal’ trade mark, increasing the variables that need to be factored into the comparison, and also increasing the risk that some elements of the mark will point towards confusion while others will point away from it. To their credit, the European courts and tribunals have attempted to formulate a set of principles to be applied to composite mark cases. However, a ‘one size fits all’ solution is never going to work in this complex area, and indeed various exceptions to and modifications of the rules have been developed to respond to different factual situations. While this is frustrating in terms of legal certainty and predictability, it is perhaps inevitable if the courts are truly going to capture the various shades of consumer perception against a wide range of scenarios and to balance the need to pay particular attention to the distinctive and dominant parts of marks with the need to conduct a global appreciation of the marks before them as a whole.

mark PIA—both for jewellery. The longer mark would be seen as the name of a specific person whereas the shorter mark would be seen as a generic first name.

160

Case T-358/15 Arrom Conseil v EUIPO EU:T:2016:490, [43].

4 Similarity of Goods and Services 1. Introduction 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 services1 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. However, the Court of Justice of the European Union (CJEU) has made it clear that a minimum level of similarity of goods is required in every case,2 and in practice, courts tend to reach a preliminary conclusion on similarity of marks ranging from low to high similarity before balancing this with the other relevant factors in an overarching analysis of whether confusion is likely.

2. The Boundary Between Identical and Similar Goods There is a potential action for likelihood of confusion where the parties’ goods or services are either identical or similar. The boundary between identical and similar goods is crucial for discerning whether a situation falls within the ‘double identity’ provisions,3 and thus qualifies for automatic protection without the need to show confusion. However, less rides on this distinction under Article 5(1)(b) and its equivalents, since, whether the goods are identical or similar, a likelihood of confusion will need to be shown. In these circumstances, a finding that the goods are identical will make things

1 Henceforth, all references to ‘goods’ should be read to include ‘goods and services’, unless indicated otherwise. 2 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (CJEU) EU:C:1998:442, [22]; followed in Case C-224/17 P Hernández Zamora v EUIPO and Rosen Tantau EU:C:2017:791, [8]‌–[ 9]. 3 Where both the marks and the goods are identical under Art 5(1)(a) of Directive (EU) 2015/2436/EU of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast) [2015] OJ L 336/1 (hereafter TMD 2015) and its equivalents. The Confusion Test in European Trade Mark Law. Ilanah Fhima and Dev S. Gangjee, Oxford University Press (2019). © Ilanah Fhima and Dev S. Gangjee 2019 DOI: 10.1093/oso/9780199674336.003.0004

Classification System in Assessing Similarity of Goods 105 slightly easier, as there will be no need for an evaluation of whether the goods are similar, but the relationship between the goods will still need to be balanced against how close the signs are, how distinctive the signs are and any other relevant considerations as part of a global appreciation of whether confusion is likely. Additionally, even if the goods are found not to be identical, they will generally be close enough to be similar and so Article 5(1)(b) TMD 2015 can still apply. Frequently it will be self-evident that goods are identical, for example, if they are expressed in the same language or an obvious synonym is used. Likewise, if the junior goods are included within the senior specification (e.g., junior denim clothing falls within senior ‘clothing, footwear, headgear’), there will be identity.4 Further, the EUIPO has adopted the approach that if either junior specification of goods includes goods that overlap with the senior goods then at least the overlapping part will be identical, and possibly the entire specification will be as the EUIPO is unwilling to dissect broad specifications.5 Where there is an overlap, it may be possible for the junior user to employ a disclaimer in respect of the coinciding goods (although this may be difficult in practice because of the challenge of articulating the disclaimer widely enough to disclaim similar goods, as it discussed below).

3. The Limited Role of the Nice Classification System in Assessing Similarity of Goods The Nice Classification system classifies goods into groups called classes, which are numerically designated. When a trade mark applicant applies for either an EU or a national trade mark, he must designate which class or classes he wishes to have his marks registered for. Since each class (there are forty-five in total) covers a wide range of goods and services, detailed in various sub-headings, applicants will frequently specify which goods or services within those classes they wish to have their marks registered for, to avoid the risk of the mark being revoked for lack of use on the goods for which it is registered. Although the fact that goods are in the same class may sometimes serve as an informal starting point for the goods and services comparison,6 this should be treated with caution. For example, Article 33(7) EUTMR7 states that goods and services cannot be assumed to be similar from the fact that they are in the same class and, vice versa, it cannot be assumed from the fact that they are in different classes that they are dissimilar.

4 Case T-104/01 Oberhauser v OHIM EU:T:2002:262, [32]. In a UK example, ‘halal meat’ was said to fall within ‘fresh meat, poultry and game’: Raj Foods Ltd v Masala World Ltd, Trade Marks Registry (Invalidity), O/019/ 08, [13]. 5 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch.2, pp. 18–19. 6 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch.2, p. 7. 7 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154 16.6.2017, pp. 1–99).

106 Similarity of Goods and Services This provision has been repeatedly cited before the General Court (GC)8 and, indeed, the CJEU has stressed9 that in every case, there must be a reasoned consideration and comparison of the characteristics of the goods in determining their similarity or lack thereof, and merely citing their classifications is insufficient.

4. The Canon Test for Similarity of Goods Similarity of goods has received surprisingly little attention, with no real significant developments since the CJEU laid out its test for similarity of goods in the 1998 Canon case, although the factors adumbrated have been elaborated on. Perhaps this is because comparing goods is simpler compared to comparing marks, with no need for an in- depth examination of the meaning of the integers being compared. The Canon court10 began by stressing that all relevant factors relating to the goods or services should be taken into account and then approved a non-exhaustive list of relevant factors, which appear to be derived from combining the prevailing UK test at the time, articulated in British Sugar11 and factors put forward by the French,12 namely: • The nature of their goods; • Their intended purpose (though this was wrongly translated in the English version of the judgment as their end users);13 • Their method of use; • Whether the goods are in competition; • Whether the goods are complementary. Perhaps a bigger issue in that case was whether the level of similarity of goods required depended on the reputation of the senior mark (the argument being that if a mark was well known, consumers would be more likely to be confused by use even on less similar goods).14 The CJEU, in line with its global appreciation approach, controversially held that it did. In practice though, courts (particularly the GC) tend first to analyse similarity of goods in isolation against the Canon test and leave the impact of the mark’s reputation until the point where the court weighs up the level of similarity of marks and goods and the distinctiveness of the mark with a view to establishing whether there is confusion overall. 8 For example, Case T- 118/ 07 PPTV v OHIM EU:T:2011:58, [35]; Case C- 406/ 11 P Atlas v OHIM EU:C:2012:136, [36]; Case T-317/01 M+M v OHMI EU:T:2004:195, [64]. The same principle is contained in Case T-531/12 Tifosi Optics v OHMI EU:T:2014:855, [52]. 9 Case C-597/12 P Isdin v Bial-Portela EU:C:2013:672, [22]–[29]. 10 Canon (CJEU) (n 2), [23]. 11 British Sugar plc v Robertson Ltd [1997] ETMR 118, [127]. 12 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (AGO) EU:C:1998:159, [45]–[47]. 13 Case R-519/2003-2 Tiffany & Co v Emballages Mixtes et Plastique Sarl 14 December 2004, [50]. 14 See Jacob J’s (as he then was) critique in British Sugar v Robertson (n 11), 124–125. See more generally the account of global appreciation in A. Griffiths, ‘The Impact of the Global Appreciation Approach on the Boundaries of Trade Mark Protection’ [2001] Intellectual Property Quarterly 326.

A Question of Law or a Question of Fact? 107 Courts in subsequent cases have broadly tended to employ this list of factors, although courts have also adopted a number of other factors, the most important of which are whether the goods share a channel of trade15 and whether it is common in the trade for the goods to have the same manufacturer or source. These factors will each be discussed in detail below. In practice, some of the factors are more important than others, with whether the goods are complementary and whether they share trade channels being considered relatively frequently and method of use seldom being relied on. In fact, research elsewhere by one of the authors has suggested that none of the similarity of goods factors are routinely employed in every case.16 This is in marked contrast to similarity of marks, where the CJEU’s factors of visual, phonetic, and conceptual similarity are considered in every case. The granularity of the test for similarity of goods is in marked contrast with how this issue is considered in the USA. Technically, similarity of goods is not needed at all in the USA, as long as likely confusion can be shown through other indicia. However, similarity of goods is a factor that can be taken into consideration. For example, the much- used Polaroid test17 calls on courts to consider ‘the proximity of the products’, without further specifying how to assess whether the goods are proximate. The Polaroid test is also more fluid in that it considers ‘the likelihood that the prior owner will bridge the gap’, whereas the EU test sticks firmly to the relationship between the parties’ current offerings.

5. A Question of Law or a Question of Fact? In RISE, Mr Johnson, sitting as Appointed Person, considered whether similarity of goods was a question of law, or one of fact.18 The importance of this question is that, if the finding is one of law, then a specification would have only one meaning—in other words it has a right or wrong answer, which can be reviewed by higher courts/tribunals. While there was no clear authority on this question in relation to trade marks, Mr Johnson looked back at current trends in construction, in relation to contractual terms and patents. In both cases, the meaning of the words used is treated as a question of fact, while the effect of those words is a question of law, and so he adopted the same approach to similarity of goods under trade mark law.19 There is merit to this approach, 15 The omission of this factor from the Canon test is surprising, not least because it was cited by AG Jacobs in his Opinion (Canon (AGO) (n 12),[45]). The factor is also well embedded in the various US circuit court tests for confusion—see J. T. McCarthy et al., McCarthy’s Desk Encyclopedia of Intellectual Property (3rd edn, BNA, 2004) § 24:31 onwards. 16 See I. Fhima and C. Denvir, ‘An Empirical Analysis of the Likelihood of Confusion Factors in European Trade Mark Law’ (2015) 46(3) IIC 310, though it should be noted that similarity of goods is more likely to be conceded than similarity of marks, meaning that the courts often do not get the opportunity to apply the similarity of goods test. 17 Polaroid Corp v Polarad Electronics Corp 287 F.2d 492, 495 (2d Cir 1961). 18 Barclays Bank plc v Rise Construction Management Ltd, Trade Marks Registry (Appointed Person), O/635/17, [9]‌–[27]. 19 Ibid, [24].

108 Similarity of Goods and Services since the description of goods will be found on the Trade Marks Register. The Register is there to be read and understood by competitors and members of the public who, by nature, may construe language slightly differently. However, the scope of protection is rightly a question for the courts. A further question that arose was whether, given the harmonised nature of trade mark law, this was a question of EU law. The Appointed Person thought not because detailed matters of procedure are left to Member States.20 It is odd, though, to consider an issue which will ultimately determine the scope of a trade mark’s protection to be one of mere procedure.

6. The Factors 6.1 Nature of the Goods The physical nature and composition of the goods can play an important role in establishing that they are of a similar nature. For example, the fact that the parties’ goods—fruit juices and herbal and vitamin beverages—were both non-alcoholic beverages that would be consumed cold meant that they were similar.21 However, care must be taken, because tribunals generally will not express the nature of the goods in such a general way, unless the trade mark specification itself does so,22 and will instead look in more detail at the exact qualities of the goods before them. For example, it is tempting to think that beer and tequila23 or wine and beer24 would be similar because they all are alcoholic beverages. However, tribunals have found these drinks not to be similar in nature on account of their different colour, smell, and taste. Conversely, a difference in physical nature may militate against similarity of goods. Thus, the fact that incontinence pads are designed to be absorbent and disposable while hosiery is not, meant that the two were not similar in nature.25 Shared ingredients can also contribute to goods having a similar nature. For example, the fact that cheese (the junior goods) is made of milk (the senior goods) meant that they were similar in nature.26 Bicycles and electric or motorised bicycles were similar in nature because both had the same constituent parts of a saddle, two wheels, handlebars, a chain, and pedals.27 Analogously, the GC has found belts and luggage to be similar in nature because both are made of leather.28 Conversely, the fact that goods are made of

20 Ibid, [26]. 21 Case C-416/04 P Sunrider v OHIM EU:C:2006:310, [86]. 22 Thus, in Case T-276/09 Kavaklidere-Europe v OHMI EU:T:2012:313, [29]–[31], the specification was for ‘alcoholic beverages (except beers)’, which was to be compared to beers. Although this specification would have included wine, which was not particularly similar to beer, it also included drinks such as cider and alcopops, which were closer in nature. 23 Case T-584/10 Yilmaz v OHMI EU:T:2012:518, [54]. 24 Case T-175/06 Coca-Cola v OHMI EU:T:2008:212, [65]. 25 Case T-504/11 Paul Hartmann AG v OHIM EU:T:2013:57, [39]–[40]. 26 Case T-237/11 Lidl Stiftung v OHIM EU:T:2013:11, [87]. 27 Case T-379/12 Electric Bike World v OHIM EU:T:2013:529, [32] and [37]. 28 Case T-483/10 The Pukka Luggage v OHMI EU:T:2011:692, [22].

The Factors 109 different ingredients can suggest that they are not similar. For example, in finding wine and beer to be essentially dissimilar, the GC drew attention to the fact that the former is made from grapes while the latter is made from malt.29 Once again though, there is a danger in overgeneralising. In other cases, tribunals have found that the mere fact that both parties’ goods are or can be made of leather was not that helpful since a diverse range of goods can be made of leather.30 There is some overlap between the nature of the goods and their intended purpose, and tribunals have sometimes cited factors which are arguably most suitable for the latter in support of a finding of similarity on the former. Thus, the GC found various construction materials, adhesives, and paints to be similar in nature because they all consist of ‘goods used for the contribution, protection, maintenance and repair of buildings’.31 Much depends on the degree of abstraction employed and tolerated in defining the goods. For example, ‘Installation of computer and network systems; repair services for computers and computer peripherals, computer networks and associated peripheral devices; computer installation and maintenance services; repair and maintenance of motherboards, VGA cards, servers, personal computers and internet hardware equipment’ and ‘Obliterating electronically stored data to render such data unreadable and irretrievable from electronic equipment and components on which such data has been stored’ were both defined as ‘IT specialist services’ and so were similar in nature, even though the former relates to the installation of computers while the latter involves their repair.32 Similarly, ‘creation of web pages’ and ‘Design of interior decor; packaging design services; graphic arts designing; industrial design; creating and maintaining websites for others; architecture; architectural consultation’ were both classed as ‘information technology services’ and so were similar in nature.33 Yet, as has been discussed above, the GC has rejected the generic label of ‘alcoholic drinks’ to describe beer and wine and beer and tequila. One example where the use of a generic term to describe the goods has had a profound effect on the finding of similarity in nature is in the realm of pharmaceuticals. The EUIPO Guidelines state that specific pharmaceuticals are considered similar to other specific pharmaceuticals since they are all chemical products, their purpose is to heal or cure, they are sold from the same outlets and originate from the same source, that is the pharmaceutical industry.34 Indeed, the GC has even found that pharmaceutical preparations for humans are similar in nature and purpose to veterinary preparations as both 29 Coca-Cola v OHMI (n 24), [64]–[65]. 30 See, e.g., Case T-443/05 El Corte Inglés SA v OHIM EU:T:2007:219, [42] (‘clothing, footwear, headgear’ versus ‘leather and imitations of leather, trunks and travelling bags’); Bowerbank v Michele-Textil-Vertriebsgesellschaft mbH, Trade Marks Registry (Appointed Person), O/070/07, [11] (trousers and slacks versus footwear and headgear) and analogously Case T-657/13 BH Stores v OHMI EU:T:2015:449, [58] (the fact that children’s bath toys and sporting articles could both be made of wood, plastic, metal, or leather did not result in similarity of goods as the same was true of many other goods). 31 Atlas v OHIM (n 8), [30]. 32 Case T-451/11 Gigabyte Technology v OHMI EU:T:2013:13, [51]. 33 Case T-388/12 Singer v OHIM EU:T:2013:536, [34]. 34 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch. 2, p. 45. Before the GC, see e.g., Case T-161/10 Longevity Health Products v OHMI EU:T:2011:244, [23]–[26].

110 Similarity of Goods and Services are intended to treat pathologies35 and the Guidelines have gone as far as to suggest that such goods are identical.36 The EUIPO’s expansive approach to similarity in the field of pharmaceuticals is only possible because the integers of the similarity test appear to be applied particularly liberally here. For example, it would be relatively easy to reach the opposite conclusion if comparing an over-the-counter cream for treating athlete’s foot with a pill for lowering blood pressure. The way the EUIPO Guidelines deal with this is by stating that, while all pharmaceuticals are similar, some will have a lower degree of similarity than others.37 Even then, the Guidelines counsel that a low degree of similarity should only be established in exceptional cases. Those of suspicious mind might wonder whether this approach is influenced by a desire to give strong protection against confusion to pharmaceuticals since the consequences of confusion can be serious, and even fatal. Finally, it should be noted that the nature of goods can depend as much on consumer perception as on the ‘objective’ nature of the goods. For example, while a seasoned lawyer might realise that the services of a solicitor are different from those of a licenced conveyancer, Birss J found that those services could be similar since this distinction would be lost on members of the general public to whom these services were marketed.38

6.2 Intended Purpose and Uses of the Goods Comparing the intended purpose of the goods must mean something different from considering whether the goods do the same thing, as such considerations are already taken into account in the evaluation of whether the goods are in competition with each other. The Appointed Person, in Elliot v LRC,39 provides a helpful illustration of difference between the two factors. He gives the example of cricket bats, cricket pads, and cricket nets. One cannot use any of these goods in place of the other, but their common purpose is to enable people to play cricket. This example does highlight a significant difficulty in establishing whether goods have a common purpose, namely the level of abstraction that should be employed when defining the purpose of the goods. The Appointed Person identified the purpose as facilitating the playing of cricket, but distinguished this from equipment necessary to play sport in general, presumably because this latter category would have been too abstract.40 Clearly, the greater the level of 35 Case T-97/11 Rovi Pharmaceuticals GmbH v OHIM EU:T:2013:474, [58]. See also, Case T-75/13 Boehringer Ingelheim Pharma v OHMI EU:T:2014:1017, [60]. 36 EUIPO Guidelines, Part C, section 2, ch. 2, p. 45. 37 Ibid. See also the discussion of pharmaceutical consumers in Chapter 6, section 4.5. 38 Redd Solicitors LLP v Red Legal Ltd and Martin Crighton [2012] EWPCC 54 (PCC), [90]. Conveyancers are professionals who represent clients when buying or selling properties. 39 Elliot v LRC Products Ltd, Trade Marks Registry (Appointed Person), O/223/15, [36]. 40 For an analogous example where the level of abstraction was held to be too great, see Awareness Ltd v Plymouth City Council, Trade Marks Registry (Appointed Person), O/236/13, [44] (teaching sports, martial arts, and dance could, on a general level have been seen as similar to teaching yoga because all involved teaching, but applying this logic would ‘on a reduction ad absurdum basis’ result in all goods and services being found similar because all have some level of similarity).

The Factors 111 abstraction applied in defining the purpose of the goods, the wider the range of goods that will be brought into the stable of similarity under this factor. It is also worth noting that the level of abstraction employed by the Appointed Person moves this factor away from overlapping with goods which are in competition with each other to those which are complementary. For example, a cricket bat cannot be used in place of a cricket ball, but the combination of the two is essential for a game of cricket. The GC appears to have favoured a relatively low level of abstraction in defining the purpose of the senior and junior goods respectively. For example: • Hosiery and incontinence wear did not have the same purpose, even though the purpose of both could be described as covering the body.41 • Clothing and footwear were designed to cover, conceal, protect, and adorn the human body while optical sunglasses were designed to protect the eyes and watches were designed to tell the time and jewellery was designed to be ornamental. This was the case even though all might be seen as part of the ‘luxury’ or ‘haute couture’ market.42 • Substances for cleaning waste pipes and for polishing household metals were found not to have the same purpose, even though both could be described as having the purpose of cleaning.43 This though might be contrasted with an earlier case where cosmetics and soaps were held to have the same purpose of beautification.44 • ‘Dietetic foods adapted for medical use in any shape or form’ and ‘tobacco-free cigarettes for medical purposes’ did not have the same purpose, even though both sets of goods related to health.45 • The EUIPO Guidelines counsel against defining the intended purpose of vinegar as ‘human consumption’ as this is shared with all foodstuffs, but instead suggest ‘everyday seasoning’.46 Examples where the goods fell on the right side of the level of abstraction and so were found to be similar in purpose include: • Print and online publications both had the same purpose of communicating information.47 • Creating and maintaining websites shared the purpose of ‘creat[ing] certain products linked to computing with webpage and software design and various hosting services’.48

41 Hartmann v OHIM (n 25), [37]. 42 Case T-505/12 Compagnie des montres Longines, Francillon v OHMI EU:T:2015:95, [49]–[56]; Case T-170/12 Beyond Retro v OHMI EU:T:2014:238, [40]. 43 Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM EU:T:2005:288, [85]. 44 Case T-418/03 La Mer Technology Inc v OHIM EU:T:2007:299, [111]. 45 Case T-454/15 Laboratorios Ern, SA v EUIPO EU:T:2016:262, [23]. 46 EUIPO Guidelines, Part C, section 2, ch. 2, p. 27. 47 Case T-365/09 Michalakopoulou Ktimatiki Touristiki AE v OHIM EU:T:2010:455, [33]. 48 Singer v OHIM (n 33), [34].

112 Similarity of Goods and Services • Shopping trolleys had the same purpose as ‘apparatus for locomotion by land’ as both were ‘a set of organised parts used for movement by land’.49 The exception to this relatively strict approach is once again in the field of pharmaceuticals. There the purpose of the two parties’ goods has frequently been defined as treating pathologies or health problems. This is despite the fact that those maladies are often very different in nature and in what is required to treat them. For example: • Veterinary and human pharmaceuticals were both said to have the same purpose of treating pathologies.50 • General pharmaceuticals expressly not including those used to treat disorders of the central nervous system had the same purpose of treating human health problems as anti-epileptics.51 • Dermatological or hormone preparations had the same purpose of treating human health problems as preparations for the reduction of pain and fever.52 • ‘Pharmaceutical preparations for the treatment of the disorders of the central nervous system’ were similar to ‘oncological preparations and preparations for cardiovascular treatments’ because of their shared purpose of treating human health problems, but only to a low degree, because of their different therapeutic indications.53 • ‘Pharmaceutical and veterinary products and preparations for use in oncology’ and ‘Pharmaceutical products and medicines not for use in oncology’[emphasis added] were both similar in purpose because the latter drugs could be used to treat side effects of the former drugs, even if the latter drugs were not used to directly treat the cancer.54 This generous treatment of pharmaceuticals extends to a greater willingness on the part of tribunals to find a commonality of purpose between pharmaceuticals and goods which are very different in nature from medication. For example: • Pharmaceuticals and an insecticide intended to eliminate dust mites had the similar purpose of preventing or treating a respiratory illness.55 • Pharmaceuticals for digestive maladies were held to have a similar purpose to food supplements for medical purposes.56 • Dietetic substances for medical use, preparations for slimming purposes and sanitary preparations for medical purposes had the same purpose of treating human

49

Case T-613/14 Industrias Tomás Morcillo, S.L. v EUIPO EU:T:2016:198, [19]–[24].

50 Rovi Pharmaceuticals v OHIM (n 35). 51 Longevity Health v OHMI (n 34). 52 Boehringer v OHMI (n 35), [58]. 53

Case T-493/12 Sanofi v OHMI EU:T:2014:807, [23]–[25]. Case T-85/15 Alfa Wassermann SpA v EUIPO EU:T:2017:336, [32]. 55 Case T-48/06 Astex Therapeutics Ltd v OHIM EU:T:2008:329, [40]. 56 Case T-77/10 Certmedica International v OHMI EU:T:2012:95, [93]–[94]. 54

The Factors 113 health problems as pharmaceutical preparations for the reduction of pain and fever.57 • An allegedly aphrodisiac drink was held to have a similar purpose to the prescription medication VIAGRA.58 • ‘Microcoils used for endovascular surgery for the treatment of aneurysms’ had a similar purpose to pharmaceuticals as both could be used to treat or prevent aneurysms.59 This can be contrasted with the treatment of medical related substances in Sunrider, where the GC found that herbal nutritional supplements did not share a purpose with a herbal beverage, the purpose of the former being to balance nutritional deficiencies and of the latter to quench thirst.60 There also seems to have been a bit of a rolling back against the generous attitude to pharmaceuticals in Opko v EUIPO.61 There the GC found that the mere fact that the two parties’ goods were pharmaceuticals only led to a low degree of similarity, and that it was necessary for the pharmaceuticals to treat the same condition (in this case kidney disorders) for there to be a higher degree of similarity. A further issue regarding defining the intended purpose of goods is that many goods have more than one potential purpose or use, particularly if a little bit of creativity is employed. No doubt it is for this reason that the Canon test specifically mentions this intended purpose of the goods. This is illustrated by the EUIPO Guidelines, which note that while a plastic bag can be used to either carry things, or as rain protection, it is only the former purpose which will be taken into account.62 Along similar lines, the GC rejected an argument put forward by the EUIPO that gymnastic and sporting articles were similar in purpose to toys, games, and playthings because there was a ‘certain fluid transition’ between the two sets of goods and certain sporting equipment could be used for games and vice versa.63 Instead, the GC identified the primary purpose of the former goods as training the body through physical exercise while that of the latter goods was to entertain.64 Similarly, in Sunrider, the fact that, like nutritional supplements, beverages would also play a role in ensuring adequate nutrition did not result in similarity of purpose since this was only a secondary purpose on the part of beverages, with the primary purpose being to quench thirst.65 What amounts to the primary or intended purpose of goods or services is arguably not as clear as the GC sometimes makes out though. For example, bicycles and exercise 57 Boehringer v OHMI (n 35), [59]. 58 Pfizer Ltd v Eurofood Link (UK) Ltd [2000] ETMR 896, [49]. 59 Case T-218/12 Micrus Endovascular v OHMI EU:T:2014:760, [68]. 60 Case T-221/12 Sunrider v OHIM EU:T:2014:25, [38], upheld in Case C-142/14 P EU:C:2015:371. 61 Case T-88/16 Opko Ireland Global Holdings v EUIPO EU:T:2017:32, [79]–[81]. 62 EUIPO Guidelines, Part C, section 2, ch. 2, p. 27. 63 However, it was accepted in Case T-687/14 Novomatic AG v OHIM EU:T:2016:37 that there was a ‘fluid transition’ between slot machines as toys and real slot machines, and so lottery game machines were similar to games and playthings. 64 Case T-514/11 i-content v OHMI EU:T:2013:291, [35]–[36]. See similarly, BH Stores v OHMI (n 30), [68]. 65 Case T-221/12 Sunrider v OHIM EU:T:2014:25, [38], upheld in Case C-142/14 P EU:C:2015:371.

114 Similarity of Goods and Services bikes were found to be similar in purpose as both had the purpose of being used for exercise, but it is just as easy to say that the primary purpose of a bicycle is transportation, which is clearly not something that can be achieved by an exercise bike.66 Similarly, the drinkers at one’s local public house may be surprised to discover that, according to the GC, the primary purpose of beer is to quench thirst, which meant that it was different in purpose from tequila.67 It should also be noted that some goods may genuinely have two equally weighted purposes. For example, it was recognised that insecticides intended to eliminate dust mites might be meant to treat both respiratory problems and skin allergies, but this did not prevent them from being similar in purpose to pharmaceutical preparations designed to treat respiratory illnesses in particular.68

6.3 Users of the Goods—Do Consumers Overlap? Shared end users was included in the original English translation of the Canon case in place of the purpose of the goods factor. Although this mistranslation was subsequently corrected,69 courts have sometimes used the fact that goods or services share end users in order to support an argument of confusion. This is not surprising since the list of factors given in Canon is an open one so, while this factor may not have been on the CJEU’s original list, there is nothing to stop it from being utilised. In fact, the GC tends to use the slightly broader term, ‘end consumers’. The difference between the two terms is explained in the EUIPO Guidelines.70 Essentially, consumers make the purchasing decisions while end users consume the goods, with the EUIPO giving the example of pet food, where animals are the end user while humans would be the relevant public. In should be noted that this factor needs to be treated with particular caution in relation to mass market goods which are aimed at the general public. As noted in the EUIPO Guidelines,71 television sets, cars, and books are all purchased by the same consumers, but that does not mean that they are similar. Instead, cases where a finding of shared consumers has been helpful tend to be those where that factor is interrelated with another factor. For example, obliterating data such as viruses would, for part of the services, be most likely to be offered by an undertaking that installed, repaired, and maintained computers and, in a sense, these services are complementary.72 In other instances, the courts have drawn attention to the shared consumers where the goods have the same purpose, broadly defined. Thus, food supplements for medical purposes were found to be similar to treatments for digestive maladies where both had a ‘medical purpose’ and were targeted at the same consumers73

66 Electric Bike v OHIM (n 27), [35]. 67 Yilmaz v OHMI (n 23), [54].

68 Astex Therapeutics v OHMI (n 55), [40].

69 Tiffany v Emballages Mixtes (n 13), [50].

70 EUIPO Guidelines, Part C, section 2, ch. 2, p. 33. 71 EUIPO Guidelines, Part C, section 2, ch. 2, p. 33. 72 Gigabyte Technology v OHMI (n 32), [80].

73 Certmedica International v OHMI (n 56), [94].

The Factors 115 and soaps and bath additives could be used for making the skin more beautiful and thus would be aimed at the same category of consumers as the junior cosmetics.74 This approach makes sense; as a person with a health condition may try multiple ways to resolve it and may reasonably expect these solutions to originate from the same source. One example where the notion of shared consumers has been treated particularly broadly is (once again) in relation to pharmaceuticals. The senior registration was EPILEX for ‘anti-epileptics’ while the junior application was E-PLEX for ‘Pharmaceutical and veterinary preparations, except medicines to combat diseases in connection with the central nervous system’ (epilepsy being a disease of the central nervous system). The GC found that, despite this disclaimer, the goods were aimed at the same consumers, namely healthcare professionals and patients.75 Although this is understandable in relation to healthcare professionals who might reasonably prescribe or dispense medication for a wide range of ailments, a patient will generally be seeking medication for the particular ailment he is suffering from at any given time and so different patients will be seeking different medications. Given the consequences of mistakes in this class of goods, it is suggested that this is another example of tribunals adopting a particularly expansive approach to similarity of goods in relation to pharmaceuticals.

6.4 Method of Use of the Goods The method of use factor has received very little attention by the tribunals. Indeed, even the examples given in the EUIPO Guidelines are those created by the authors of the guidelines, rather than being based on actual cases.76 Although method of use is sometimes mentioned together with other factors,77 it has received very little individual attention; perhaps because once goods are similar in nature and purpose, the fact that they share a method of use will often be a foregone conclusion, and indeed, this is the approach taken by the EUIPO Guidelines, which state ‘Method of use often follows directly from the nature and/or intended purpose of the goods/services and therefore has no or little significance of its own in the similarity analysis’.78 The Guidelines further point out that even where the method of use is identical, this alone will not be sufficient to establish similarity, giving the example of chewing gum and

74 La Mer v OHIM (n 44), [111]–[112]. 75 Longevity Health v OHMI (n 34), [23]. 76 EUIPO Guidelines, Part C, section 2, ch. 2, pp. 27–28. 77 For example, Case T-129/09 Bongrain v OHIM EU:T:2011:193, [29] (prepared foods and milk, cheese and dairy products had a similar nature, purpose, and use because all consisted of dairy products which gave goods their flavour); Case T-586/10 Aktieselskabet af 21. november 2001 v OHMI EU:T:2011:722, [52] (the junior perfumes and senior horological instruments and leather goods had a different nature, intended purpose, and method of use); Case T-361/11 Hand Held Products v OHMI EU:T:2012:377, [46] (barcode scanners and interactive terminals for displaying and ordering goods had ‘essential differences’ between their method of use and intended purpose). 78 EUIPO Guidelines, Part C, section 2, ch. 2, p. 27.

116 Similarity of Goods and Services chewing tobacco, both of which are chewed, but clearly are different in nature and purpose.79

6.5 Are the Goods in Competition? Goods or services will only be in competition where they are substitutable, in the sense that one can be used instead of the other.80 This can only be the case where the goods are intended for the same public.81 Often the goods will not be in competition because they are aimed at different sectors of the public, even though they may be related. Frequently the divide will be between goods aimed as business or professionals and those aimed at the general public. Examples of goods or services which were not in competition include: • The tools to enable a business such as a hotel, to create a website to serve, book, and pay for accommodation versus travel information and reservation services to enable the general public to book accommodation and travel.82 • Barcode scanners designed to be used by professionals for capturing encrypted data to process sales versus interactive terminals for displaying and ordering goods and services in order to enable the general public to contain information about goods and to choose one of them.83 Goods may also not be in competition because the difference in nature between them means that they do not fulfil the same need, and so are not substitutable. Examples of goods which were not in competition because they were not substitutable include: • Incontinence pads and napkin pants versus hosiery and underwear.84 • Beverages versus herbal dietary supplements (the fact that beverages had nutritional benefits while dietary supplements were sometimes in drinkable form did not mean consumers would imbibe one instead of the other).85 Different physical form though does not prevent goods from being in competition, and in Lidl 86 milk was found to be substitutable for cheese for those seeking calcium in

79 Ibid, p. 28. See also BH Stores v OHMI (n 30), [60] (fact that both children’s bath and development toys and sporting articles shared the same method of use in that both required the use of physical power was unhelpful since the same was true of many other products such as manual tools, cleaning, and construction instruments). 80 See, e.g., Case T-549/14 Lidl Stiftung & Co KG v EUIPO EU:T:2016:594 (baking ingredient and industrial confectionary in competition because consumers would use both in patisserie ([72]); nuts, poppy seeds, coconut flakes etc. and spices in competition because both would be used for flavouring ([76])). 81 Case T-316/07 Commercy v OHMI EU:T:2009:14, [46]. 82 Ibid. 83 Hand Held v OHMI (n 77), [45] and [47]. 84 Hartmann v OHIM (n 25), [42]–[43]. 85 Sunrider v OHIM (n 65), [82]–[83]. 86 Lidl v OHIM (n 26), [87].

The Factors 117 their diets. This is perhaps a somewhat surprising finding, but it does show that the ultimate determinant of whether goods are in competition will be whether consumers view them as such (or at least the court’s perception of whether they do). It is noted in the EUIPO Guidelines that goods or services need not necessarily be in the same price band to be in competition, with the example being given of gold jewellery versus fashion jewellery,87 although it is observed in the Guidelines that competing goods or services will often be in the same price range.

6.6 Are the Goods Complementary? 6.6.1 Complementarity Defined The GC, in Easyhotel, defined complementary goods as: those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.88

Wrapped up in this definition are two requirements: first, that the goods must be used together and secondly, that because of this closeness, consumers will believe that they originate from the same undertaking. Both of these requirements have been interpreted relatively strictly. 6.6.2 Necessity Generally, a strict approach has been taken to what it means for the good to be used together. This is apparent in the use of the term ‘indispensable’ by the Easyjet court, though the other term used, ‘important’, is perhaps less prescriptive. A similar sentiment is apparent in Sergio Rossi, where this language is echoed89 and the term ‘necessity’ is also used.90 The use of the term ‘indispensable or important’ as an almost statutory test has been strongly criticised in the UK by the Appointed Person in Elliot v LRC, who points out that the complementary goods requirement is merely a proxy for the ultimate similarity of goods test of ‘the fact that customers may think that responsibility for the [junior] goods lies with the same [senior] undertaking’. To mechanically demand a showing that the junior goods are ‘indispensable or important’ loses sight of this and instead treats that formulation as an end in itself.91 On the facts of this case, the Appointed

87 EUIPO Guidelines, Part C, section 2, ch. 2, p. 31. 88 Commercy v OHMI (n 81), [57]. 89 Case T-169/03 Sergio Rossi v OHMI EU:T:2005:72, upheld in Case C-214/05 P Rossi v OHIM EU:C:2006:494, [60]. See similarly, Hartmann v OHIM (n 25), [44] and Case T-558/11 Atlas v OHIM EU:T:2012:615, [25]. 90 Sergio Rossi v OHMI (n 89), [62]. 91 Elliot v LRC (n 39), [21].

118 Similarity of Goods and Services Person overturned the Hearing Officer’s decision for such a mechanical application. He found that the Hearing Officer had fallen into error in requiring that the goods in question (sex toys versus condoms and lubricants) must necessarily need to be used together. Necessity, he held, was just one example of complementarity. Indeed, the GC’s approach considers whether it is important that the goods be used together as an alternative to necessity.92 However, the Appointed Person went further, and considered it to be sufficient that the goods are often used together.93 After a thorough review of the evidence, he found that while sex toys did not need to be used together with either condoms or lubricants, they frequently were, sometimes for hygiene or birth control (presumably an example of it being important to use them together) and in other cases for pleasure (presumably an example of the goods ‘often’ being used together).94 Arguably, the Appointed Person’s decision in Elliot v Luv is at odds with that taken by the GC (and by extension, the CJEU, which upheld the GC’s decision in Sergio Rossi).95 However, the Appointed Person’s approach has much in common with that sometimes taken to aesthetic complementarity (discussed below). It would also, at least at first sight, appear to expand the situations in which complementarity can arise. However, it simultaneously reduces by the importance of the complementarity factor by stressing that, even if complementarity is found, it is one factor amongst many which much all be taken together to form a global appreciation of whether the goods are similar, rather than being an end in itself. However, examples drawn from the case law of the GC suggest that that court is restricting complementarity to situations where it is necessary for the parties’ goods to be used together and finding no complementarity where the goods are merely used together as a matter of practice, but do not have to be so used. Examples of goods which have been found to be complementary include: • Computers and computer monitors.96 • Toothbrushes and dentifrice.97 • Beds, pillows, mattresses, and bed linen.98 • Plaster and other materials for smoothing walls and paint were complementary because a wall needs to be plastered or otherwise smoothed before paint can be applied.99 • Preparations for the dealing of the surface of stone were complementary to stone building materials.100

92

Ibid, [26].

93 Ibid. 94

Ibid, [27]–[31]. Sergio Rossi v OHMI (n 89). 96 Case T-501/08 NEC Display Solutions Europe v OHMI EU:T:2011:527, [27]. 97 Case T-89/11 Nanu-Nana Joachim Hoepp v OHMI EU:T:2015:479, [39]. 98 Case T-516/12 Ted-Invest v OHMI EU:T:2014:811, [21]. 99 Atlas v OHIM (n 8), [32]. 100 Case T-273/14 Lithomex v OHMI EU:T:2015:352, [31]. 95

The Factors 119 • Body lotions and moisturising creams complemented spas, saunas, and Turkish baths since the former would often be applied during treatment at the latter.101 • ‘Rental of data processing equipment and computers’, ‘computer programming’, and ‘rental of data processing installations and computers’, were essential for the setting up and use of Internet site hosting services, which meant there was ‘functional complementarity’ between the two sets of services.102 • ‘Maintenance and repair of data processing equipment and computer installations (including equipment for access to networks and computer databases)’ and ‘data processing equipment and computers (including data storage apparatus and instruments, software and data storage software, and software for video-conferencing)’.103 • The pharmaceutical in question and an insecticide for dust mites would be most effective when used together to treat respiratory disorders, meaning that the two were complementary.104 Examples of goods deemed not to be complementary on account of the link between the goods not being close enough include: • Underwear and incontinence pads because the underwear was not designed to be worn with the pads and so the one was not indispensable or important for the other.105 • Herbal nutritional supplements were not important or indispensable to beverages.106 • Beer and tequila were not indispensable or important to each other, even though there were certain cocktails in which both were included.107 • Although wine glasses are intended for drinking wine, they were not complementary to wine because wine can be drunk from other vessels and other drinks can be drunk from wine glasses.108 • PU [polyurethane] hand float trowels were part of the same construction process as parts of cutting, milling, and polishing diamond machines and parts for machines for cutting various types of stone, brick, and tiles. However, they were not complementary as they were not used at the same stage of the construction process.109 101 Case T-388/13 Costa Crociere v OHMI EU:T:2015:118, [30]. 102 Case T-150/10 Telefónica O2 Germany v OHMI EU:T:2011:552, [35]–[36]. 103 Case T-262/13 Skysoft Computersysteme v OHMI EU:T:2014:884, [23]. 104 Astex Therapeutics v OHIM (n 55). 105 Hartmann v OHIM (n 25), [45]. 106 Sunrider v OHIM (n 65), [84]. 107 Yilmaz v OHMI (n 23). Similarly, in Coca-Cola v OHMI (n 24), [67], wine and beer were not complementary as the purchase of one would not lead to the purchase of the other. 108 Case T-105/05 Assembled Investments (Proprietary) v OHMI EU:T:2007:170, [34], upheld in Case C-398/07 P Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM EU:C:2009:288. 109 Case T-254/13 Stayer Ibérica v OHMI EU:T:2015:362, [97].

120 Similarity of Goods and Services • The fact that toys could be attached to strollers, buggies, or car seats did not mean that there was complementarity since their use was optional, rather than indispensable.110 A further situation where it might be thought that it is necessary for the parties’ products to be consumed together is where one party offers services dealing with the other parties’ goods, such as their distribution, promotion, or packaging. However, the link between these offerings is dismissed in the EUIPO Guidelines as being ‘ancillary’, and so not counting for complementarity.111 This was followed by the CJEU in Alecansan, where the court held that the services of transporting and packaging goods was not complementary to distance selling of IT goods because it would merely amount to an execution of the distance selling contract.112 Following this decision, the GC held that the storage, delivery, distribution, and packaging of pharmaceuticals was not complementary to the pharmaceuticals themselves, but was rather ‘subsidiary’ to them.113 This approach is difficult for two reasons. First of all, many providers of goods will look after their distribution etc. in-house, so there is a real prospect of consumer confusion if third parties are allowed to provide similar services under a similar name. Secondly, it is difficult to draw the line between what is and is not ancillary. Thus, in Oakley, it was held that the retailing of fashion accessories was complementary to the physical fashion accessories. There it was held that the services were not auxiliary to the goods because the goods were the object of the services and it would make no sense to offer these services without the goods that they were meant to sell.114 It is difficult though to see the distinction between this case and those described above, where the services were also designed to facilitate the distribution of the registered goods. The EUIPO Guidelines115 also rule out finding complementarity on the basis that one product in an ingredient of another, though they do indicate that such concerns can be considered elsewhere in the similarity test, as will be discussed below. However, a UK decision has treated essential oils and perfumes as complementary since essential oils are an ingredient of perfumes.116

110 Case T-195/12 Nuna International v OHMI EU:T:2014:804, [55]. 111 EUIPO Guidelines, Part C, section 2, ch. 2, p. 30. 112 Case C-196/06 P Alecansan v OHIM EU:C:2007:159, [46]–[47]. 113 Case T-76/09 Mundipharma v OHMI EU:T:2011:298, [29]. 114 Case T-116/06 Oakley v OHMI EU:T:2008:399, [54]–[56]. See also, Case T-352/14 The Smiley Company v OHMI EU:T:2015:491, [30]–[32]. A further, non-fashion example is Case T-715/13 Lidl Stiftung v OHMI EU:T:2015:256, [31] where the retailing of foodstuffs was held to be complementary to the foodstuffs themselves. Likewise, in Joined Cases T-711/13 and T-716/13 Harrys Pubar and Harry’s New York Bar v OHMI EU:T:2016:82, [59], certain foodstuffs were held to be complementary to the service of foodstuffs because those foods were necessary for the serving services to take place. Similarly, in Hoepp v OHMI (n 97), [45], the retailing of perfume and its sale by mail order was held to be similar to perfume; in Case T-549/10 Natura Selection v OHMI EU:T:2014:949, [34], table coverings and the commercial retailing via worldwide telematic networks of table covers were similar. 115 EUIPO Guidelines, Part C, section 2, ch. 2, pp. 30–31. See also Case T-288/12 EI du Pont de Nemours v OHMI EU:T:2014:196, [38], where the fact that the junior goods could be manufactured from the senior plastic did not mean that the two were complementary and Case T-406/16 Dogg Label v EUIPO EU:T:2017:482, [42] (the fact that leather could be used as raw material for production of luggage etc. did not make them complementary). 116 Thornton & Ross Ltd v Strellson AG, Trade Marks Registry (Appointed Person), O/175/14.

The Factors 121 6.6.3 Aesthetic Complementarity and the Spurious Necessity Requirement The one exception to this strict standard of necessity is in relation to aesthetic complementarity. The idea that there are certain goods which do not need to be used together to function efficiently, but nevertheless that consumers will want to use together for appearance’s sake was accepted in principle by the GC and upheld by the CJEU in Sergio Rossi.117 However, the GC suggested that an analogous approach to that of functional complementarity needed to be taken, and called for ‘aesthetic necessity’. The example given was that it would need to be ‘unusual or shocking’ for a consumer to carry a bag which does not perfectly match her shoes for there to be complementarity between those two goods.118 The clear intention of this approach is to try to apply the same strictness found in functional complementarity to aesthetic complementarity. This though is doomed to failure, as it will never be truly ‘necessary’ to match two goods, as all that is at stake is appearance, whereas in the case of functional complementarity, the good in question simply will not work without its complement. This impossible approach could lead to two outcomes: either the test will never be satisfied because there is never true aesthetic necessity or it will not be strictly followed. The former was the case in 2nine,119 where the GC rejected the desire of consumers to match hair accessories with clothing as not true necessity and too general to be taken into account. However, a greater number of cases have followed the latter approach and have taken a more liberal approach to the meaning of aesthetic necessity. In Giordano Enterprises Ltd v OHIM,120 the GC acknowledged that the desire for a coordinated ‘look’ may be sufficient.121 While it paid lip service to the idea of ‘aesthetic necessity’,122 the Giordano court rejected the idea that one good needed to be ‘indispensable’ for the use of the other for the two to be aesthetically complementary, relying instead on the Sergio Rossi court’s alternative of it being ‘important’.123 It should be noted though the court looked to other factors, such as whether it was common for undertakings to produce, for example, both clothes and shoes, to bolster this.124 Similarly, in PiraÑAM diseño original Juan Bolaños the court found aesthetic complementarity based on the desire of consumers to have a coordinated ‘look’, combined with shared distribution channels.125 What is particularly interesting about this decision is that the goods in question were clothing, footwear, and headgear versus handbags, whereas in Sergio Rossi, the court rejected the need for footwear and handbags to be coordinated.

117 Sergio Rossi v OHMI (n 89). 118 Ibid, [62]. 119 Case T-364/08 2nine v OHIM EU:T:2010:115, [36]. See similarly Beyond Retro v OHMI (n 42), [37] to [38], where the GC rejected the idea that consumers try to match jewellery and clothing with watches; Case T-39/16 Nanu-Nana Joachim Hoepp v EUIPO EU:T:2017:263, [76] (as it is unnecessary to attach a charm to a handbag zipper, charms and handbags could not be considered aesthetically complementary). 120 Case T-483/08 Giordano Enterprises Ltd v OHMI EU:T:2009:515. 121 Ibid, [25]. 122 Ibid, [27]. 123 Ibid, [27]. 124 Ibid, [29]. 125 T-443/05 El Corte Inglés v OHIM (n 30), [49]–[50].

122 Similarity of Goods and Services This approach was also applied in the Pucci case,126 with the court stressing the subjectivity of the need for the look to be coordinated, and finding that it is necessary to look at the consumers concerned, the type of activity for which the look is being put together (coordination may be more of a priority for a work outfit that one chosen to wear during leisure time) and the marketing strategies for the businesses in the sector.127 This nuanced and very context-specific evaluation would seem to take aesthetic complementarity a long way from true necessity. 6.6.4 Belief that the Goods Originate with the Same Undertaking Perhaps less attention has been paid to the second requirement laid down by the Easyhotel court, that as a result of the relationship between the goods, consumers must believe that the two sets of goods are under the control of the same undertaking. This requirement begs the question though. Of course, the ultimate question is always whether consumers will believe the two parties’ offerings to come from the same undertaking because this is the definition of confusion that is being sought under Article 5(2) and its counterparts. However, complementarity is one factor amongst many that contributes to similarity of goods, which then feeds into the overall confusion analysis. To place such a requirement in this stage in the analysis arguably gives this factor undue weight, whilst making it more difficult to rely on this factor than others in the similarity of goods analysis. In practice this requirement often does not arise in functional complementarity cases since the first requirement of necessity is so difficult to satisfy.128 Alternatively, it is subsumed in the analysis (discussed below) of whether the goods are aimed at the same public. However, it is frequently considered in relation to aesthetic complementarity. Thus, in Sergio Rossi, the GC found that handbags and shoes could only be complementary if consumers believed them to have the same commercial origin, and that this would only be the case if it was usual for them to be sold under the same trade mark because there are a large number of producers or distributors who sell them in this case.129 This approach was echoed in Tosca Blu,130 Giordano, 131 and PiraÑAM diseño original Juan Bolaños132 although in both cases, it was held that there would be such a belief as the goods in question (footwear and leather goods) would often be sold in the same retail outlets.

126 Case T-39/10 El Corte Inglés SA v OHIM EU:T:2012:502. 127 Ibid, [77]. 128 For relatively rare examples see Exxon Corporation v Kellogg Company, Trade Marks Registry (Appointed Person), O/373/04, [25] (the Hearing Officer found that while breakfast cereals may be offered at cafes or restaurants, there was no link in the way that there might be a link between beer and public houses, where beer may be brewed on the premises) and Case T-562/14 Yoo Holdings v OHMI EU:T:2015:363, [25] (restaurant and catering services would produce pastries, fruit juice, and chocolate). 129 Sergio Rossi v OHMI (n 89), [63]–[64]. 130 Case T-150/04 Mülhens v OHMI EU:T:2007:214, [37], although this case ultimately failed for lack of aesthetic necessity to use perfumes and leather goods together. 131 Giordano v OHMI (n 120), [25]–[29]. 132 T-443/05 El Corte Inglés v OHMI (n 30), [50]–[51].

The Factors 123 6.6.5 The Need for a Shared Public The Easyhotel court also held that it follows from the fact that the goods can be used together then they must be intended for the same public in order to be complementary. Thus, according to the court: It follows that there can be no complementary connection between, on the one hand, the goods and services which are necessary for the running of a commercial undertaking and, on the other, the goods and services produced or supplied by that undertaking. Those two categories of goods or services are not used together since those in the first category are used by the relevant undertaking itself whilst those in the second are used by customers of that undertaking.133

Subsequent examples of this in practice include: • Video distribution services were aimed at businesses and could not be complementary to education, training, and entertainment services, and services connected with sporting and cultural activities aimed at the general public.134 • Pharmaceuticals were aimed at end users and so could not be complementary to the storage, delivery, distribution, and packaging of pharmaceuticals, which would be aimed at businesses.135 • Bar code scanners which were aimed at sales and storage professionals were not complementary to interactive terminals for displaying and selling goods as these were aimed at consumers.136 • Conference organisation was aimed at businesses while hotels, which frequently hosted conferences, were marketed to members of the public.137 • Data-communications services were not aimed at the same public as research and development in the field of satellite radio navigation.138 While the impulse to prevent complementarity from becoming too wide a concept is understandable, it is submitted that, in imposing a bright line rule that there can be no complementarity in the absence of shared consumers, the GC has lost sight of the ultimate question of whether or not there is consumer confusion. While it may be the case that consumers will not purchase goods or services aimed at end users and vice versa, it is likely that they will be aware of the providers of those goods or services and may draw inferences as to the quality of products aimed at them from their knowledge of those aimed at other parties. Indeed, this approach was taken by the Appointed Person in SENATOR,139 133 Commercy v OHMI (n 81), [58]. 134 PPTV v OHMI (n 8), [39]. 135 Mundipharma v OHMI (n 113), [29]. 136 Hand Held v OHMI (n 77), [48]. This is a somewhat odd decision, as while consumers would use such terminals, one would expect them to be located in and purchased by shops. 137 Case T-353/11 Event v OHMI EU:T:2013:147, [51]–[55]. 138 Case T-450/11 Galileo International Technology v OHMI EU:T:2014:771, [82]. 139 Cromwell Group (Holdings) Ltd v Rexel State Ltd, Trade Marks Registry (Appointed Person), O/023/13, [22]–[23].

124 Similarity of Goods and Services who found complementarity between domestic appliances (which would be aimed at consumers) and wholesale services connected with the sale of domestic appliances. It should be noted though that the Appointed Person did not cite any of the GC’s case law on the absence of complementary in the absence of shared consumers and there was no indication that such an argument was made before her.

6.7 Trade Channels by which the Goods Reach the Market The test adumbrated in Canon does not mention shared channels of trade as a factor helpful in showing confusion. This is perhaps surprising, since it was mentioned by the Advocate General in that decision and was one of the factors listed by Jacob J (as he then was) in the influential British Sugar case,140 which was itself cited by the Advocate General.141 The difficulty with this factor, which may account for the CJEU’s reluctance to include it in the test, is that in today’s world, a diverse range of unconnected goods can be found in supermarkets, department stores, or through online shopping. For example, both breakfast cereal and ladies’ clothing can be found on the shelves of a good many supermarkets, but clearly these products are not similar. Indeed, the whole raison d’etre of a department store is to bring together a wide range of unrelated goods for the convenience of shoppers. Consequently, tribunals have dismissed the significance of this factor in a large number of cases.142 It should be remembered that whether goods have the same channels of trade is not necessarily a binary question, with goods potentially being sold through a number of different channels. For example, in Bowerbank’s Application,143 where the senior goods were ‘trousers and slacks’ and the junior goods were, inter alia, footwear, the Hearing Officer noted that, while footwear would often be sold in clothing shops, clothing would generally not be sold in shoe shops. However, tribunals have been more willing to recognise this factor as helpful towards establishing similarity of goods or services where the two sets of goods are sold in specialist shops. Indeed, research elsewhere by one of the authors has revealed that, in a survey of the GC’s jurisprudence, shared channels of the trade was the factor most commonly used to support a finding of similarity of goods.144 For example: • The junior mechanical and electric bicycles would be sold in sports shops, as would the senior exercise bikes.145 140 British Sugar v Robertson (n 11), [127]. 141 Canon (AGO) (n 12), [45]. 142 2nine v OHIM (n 119); Sunrider v OHIM (n 65), [79] (irrelevant as sold in different supermarket aisles); i-content v OHMI (n 64), [38] (the fact that both sold goods in the department store was not helpful as they would be in separate sections); T-443/05 El Corte Inglés v OHMI (n 30), [44]–[45] (mere fact that both parties’ goods sold in department stores not relevant unless sold in same place in the shop); Giant UK Limited v Major League Baseball Properties Inc, Trade Marks Registry (Appointed Person), O/264/14, [31] (need not give undue weight to channels of trade given the existence of online retailers which sell ‘almost anything one can envisage wanting to buy’; Nuna International v OHMI (n 110), [59]. 143 Bowerbank v Michele-Textil-Vertriebsgesellschaft (n 30), [11]. 144 Fhima and Denvir (n 16), 334. 145 Electric Bike v OHIM (n 27), [51].

The Factors 125 • Goods made of leather, such as handbags and wallets would often be sold in the same specialised shops as clothing.146 • Pharmaceuticals generally and anti-epileptics would both be distributed through health centres and pharmacies.147 • (Perhaps more surprisingly) both pharmaceuticals for humans and those for animals could be sold in the same sales outlets.148 • Cosmetics and soaps, perfumery, essential oils, hair lotions, dentifrices and toiletries would be sold in the same outlets.149 • Beauty products would be sold in spas and Turkish baths.150 Analogously, the fact that services are offered by the same specialists or through the same shops has contributed to a finding of similarity of goods in a number of cases including: • Cruises and package holidays were both sold through travel agents.151 • The senior computer programming, rental of computer and data processing equipment, and computer programming services and the junior hosting of websites would be offered on the Internet and through specialist IT shops.152 • The junior services offered by the original equipment manufacturers, second, computer-related services, namely the design, creation, and implementation of computer equipment and networks and senior data obliteration services would be available through the same channels.153 Conversely, where goods are sold in different shops, this may mitigate against similarity of goods. For example: • The senior napkin pants would be sold in medical supply stores while the junior hosiery would be sold in clothes shops and the clothing section of department stores.154 • Financial services and real estate brokerage would be offered from different premises, even if they were offered by the same umbrella company.155 Even where both goods are sold in supermarkets or department stores, this factor may be helpful if it can be shown that the goods are sold in the same section or aisle. For example: • Milk and cheese would be sold in the same section of supermarkets.156 146 Case T-569/11 Gitana v OHIM EU:T:2013:462, [42]. 147 Longevity Health v OHMI (n 34), [23]. 148 Rovi Pharmaceuticals v OHIM (n 35), [59]; Case T-288/08 Cadila Healthcare v OHMI EU:T:2012:124, [43] upheld in Case C-268/12 P Cadila Healthcare v OHMI EU:C:2013:296. 149 La Mer v OHIM (n 44), [112]. 150 Costa Crociere v OHMI (n 101), [28]–[29]. 151 Thomson Holidays Ltd v Norwegian Cruise Line Ltd [2002] EWCA Civ 1828, [62]–[64]. 152 Telefónica v OHMI (n 102), [38]. 153 Gigabyte Technology v OHMI (n 32), [76]. 154 Hartmann v OHIM (n 25), [40]. 155 Case T-514/13 AgriCapital v OHMI EU:T:2015:372, [43]. 156 Lidl v OHIM (n 26), [89].

126 Similarity of Goods and Services • Spreads (such as spreadable butter and butter alternatives) and milk would be sold in the same vicinity in supermarkets.157 • Yogurt drink and tea-based beverages would both be found in the ready-made drinks refrigerator in supermarkets.158 • The department selling beds, pillows, and mattresses would be close to that selling bed linen.159 Equally well, where the goods are sold in different sections of the supermarket, this may contribute to a finding of dissimilarity of goods. For example: • Beer and tequila were found on different shelves of supermarkets.160 However, where the goods are otherwise similar, differences between the distribution channels will not necessarily result in the goods being classed as dissimilar. For example: • The junior, more medicinal teas were sold in more specialised shops than the senior more general teas, and yet the goods were similar.161 • Free newspapers were similar to paid-for newspapers, despite the difference in the channels used to reach the consumer and the fact that the two would not be offered side-by-side.162

6.8 Where One Good is an Ingredient of Another Although it is not mentioned in the Canon test, the fact that one good can be used as an ingredient of another has been used as part of the similarity of goods analysis. For example, wine was (weakly) similar to vinegar because wine can be an ingredient of vinegar;163 milk, cheese, and dairy products were similar to prepared meals containing dairy products;164 lace, embroidery, needles, and ribbons were similar to clothing as the former could be used to make the latter;165 and essential oils were similar to perfumes because essential oils are an important ingredient of perfumes.166 This factor is sometimes treated (perhaps unnaturally), as pertaining to complementarity (as in Thornton & Ross167) or the nature of the goods (as in Bongrain168). It is submitted that it would be clearer if it was treated as an independent factor, albeit one which will only apply in a narrow subset of cases. 157 Vitasoy International Holdings Ltd v Dairy Crest Ltd, Trade Marks Registry (Appointed Person), O/514/13, [38]. 158 Sidhu-Robb v Nosh Beverages Ltd, Trade Marks Registry (Appointed Person), O/224/18, [18]. 159 Ted-Invest v OHMI (n 98), [27]. 160 Yilmaz v OHMI (n 23), [54]. 161 Wistbray Ltd v Creative Nature Ltd [2005] EWHC 2072 (Ch), [20]. 162 Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322 (Ch), [68]. 163 Case T-138/09 Munoz Arraiza v OHMI EU:T:2010:226, [35], upheld in Case C-388/10 P Muñoz Arraiza v OHIM EU:C:2011:185. 164 Bongrain v OHIM (n 77), [28]. 165 T-645/13 Nezi v OHIM EU:T:2016:145. 166 Thornton & Ross v Strellson (n 116), [46]. 167 Ibid. 168 Bongrain v OHIM (n 77).

The Factors 127 However, tribunals appear less inclined to take the fact that one good in an ingredient of another into account where the goods are very different in nature. Thus, fresh and processed fruit were not similar to alcoholic beverages, even though fruit would be included as an ingredient in fruit-flavoured liqueurs.169 Similarly, the differences in nature, method of use, and intended purpose overrode any similarity to be attributed to the fact that interactive terminals contained barcode scanners.170

6.9 Where it is Common in the Trade for the Goods to have the Same Manufacturer or Source One of the most influential factors in comparing goods and services, although one which is not part of the Canon test, is whether consumers will consider it normal for the two sets of goods in question to originate with the same undertaking. This will depend, amongst other things, on whether there is an established practice in the sectors concerned for a single undertaking to market or manufacture the two sets of goods, as it is this established practice that will shape consumer expectations. A key example of this principle in action is Mezzopane.171 The senior goods were beers while the junior goods were wines. While both are alcoholic beverages, the GC found that, because of the different characteristics of beer and wine, as well as differences in their composition and method of production, and the fact that there is no tradition of breweries or vineyards producing both products, the relevant consumer would consider it normal for beers and wines to come from different undertakings. Perhaps the power of this factor is that, unlike the Canon factors, which draw inferences about consumer perceptions regarding the link between goods from objective factors relating to the goods, this factor looks more directly at consumer perceptions in the market in question.172 As the Appointed Person in Elliot v LRC observed, ‘This [factor] supports a conclusion that an average consumer is likely to consider that goods of those kinds come from the same trade source since, in fact, for a number of prominent brands, they do’.173 The factor can work in favour of those trying to establish similarity of goods where there is an established practice that the goods are made or marketed under the control of the same undertaking. For example: • Pharmaceuticals for humans and veterinary pharmaceuticals were manufactured by the same undertakings.174

169 Ibid, [56]. 170 Hand Held v OHMI (n 77), [46]. 171 Coca-Cola v OHMI (n 24), [69]. 172 Indeed, if consumers are unaware that these goods are not made by the same producers then this does not work against a finding of similarity—see Lidl v OHIM (n 26), [88] (although Spanish cheese manufacturers did not produce milk, consumers may have believed that they did due to the fact that cheese is made from milk, and so the lack of trade practice did not stand in the way of similarity of goods). In other words, consumer perception about the link between the products under this factor can trump the objective reality. 173 Elliot v LRC (n 39), [38]. 174 Cadila Healthcare v OHMI (n 148); Rovi Pharmaceuticals v OHIM (n 35), [59].

128 Similarity of Goods and Services • Dietary supplements and pharmaceuticals were likely to be produced by the same undertakings.175 • It was a well-known fact that companies that produce cars and motorcycles also manufacture outboard engines for both, and this contributed to a finding of similarity of goods (albeit at a low level).176 • Producers of motor vehicle accessories and spare parts would often also be responsible for their sale, so those goods had an average level of similarity to retail services for trading in motor vehicle accessories.177 • Clothing companies would often produce belts as well as luggage and travel bags.178 • Cosmetics on the one hand and soaps, perfumery, essential oils, hair lotions, dentifrices, toiletries on the other were often made by the same manufacturers.179 • Evidence that showed that manufacturers used the same brands for spreads and milk was helpful in showing similarity between the two sets of goods.180 • Restaurant and catering services would often provide pastries, fruit juices, and chocolates.181 • Sex toys, lubricants, and condoms were often produced by the same manufacturers. In this decision, the Appointed Person drew particular attention to this factor, even though the Hearing Officer had not mentioned it, and described it as ‘of considerable significance’.182 • The same company would often offer paper dictionaries and language-learning software.183 • The relevant public would expect retrieval of data and destruction of data to be provided by the same IT specialist undertakings.184 • Companies might offer both rental and engineering of telecommunications equipment and computers on the one hand and Internet site hosting services on the other.185 • Set-top boxes for viewing digital television programmes were often supplied bundled together with telecommunications services offered by the same company, contributing in part to the finding of likely confusion.186 • Broadband providers often offer file storing, management, and sharing software and services.187

175

Case T-277/08 Bayer Healthcare v OHIM EU:T:2009:433, [43]. Case T-425/09 Honda Motor v OHMI EU:T:2011:576, [23]. Case T-75/15 Rod Leichtmetallräder GmbH v OHIM EU:T:2016:26, [22]. 178 Pukka Luggage v OHMI (n 28), [25]. 179 La Mer v OHIM (n 44), [112]. 180 Vitasoy v Dairy (n 157), [39]. 181 Yoo Holdings v OHMI (n 128), [27]. 182 Elliot v LRC (n 39), [37]–[38]. 183 ‘Langenscheidt Yellow’ (2015) 46(3) IIC 372, 376. 184 Gigabyte Technology v OHMI (n 32), [51]. 185 Telefónica v OHMI (n 102), [37]. 186 Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch), [93]. 187 British Sky Broadcasting Group Plc & Ors v Microsoft Corporation & Anor [2013] EWHC 1826 (Ch), [163]. 176 177

The Factors 129 • Those who sell computers will often maintain those computers under warranty agreements.188 • Estate agents often offered construction services under their own name.189 Conversely, the fact that it is known that such goods are not generally made or sold by the same undertaking can work against similarity of goods. Thus, in one decision, there was no similarity between footwear and perfumery in part because there was no evidence that shoe manufacturers as a class had habitually extended their business into that of perfumery.190 In a similar vein, when judging whether goods and services generally originate from the same undertaking, tribunals have tended to focus on ‘typical’ practices in the sector, rather than looking at isolated or unusual examples of shared origin. For example, the fact that premium fashion houses sold both perfume and shoes did not mean that shoe manufacturers generally extended their businesses into perfumery.191 Likewise, the GC discounted from its similarity of service analysis the fact that some telecommunications providers provided certain entertainment, sporting, and cultural activities since these were generally provided by a specialised supplier or via a specialist subsidiary.192 This factor also overlaps significantly with complementarity. It will be remembered that complementarity has been defined as having two aspects: first, that it is ‘aesthetically necessary’ to use the two goods together and secondly, that as a result of this link ‘consumers may think that the same undertaking is responsible for the production of both goods’. The GC in Sergio Rossi193 defined this second element as requiring that ‘consumers would also have to consider it usual for those products to be sold under the same trade mark, which normally implies that a large number of the producers or distributors of the goods are the same’.194 Thus, aesthetic complementarity cases are characterised by a consideration of whether it is common practice in the trade for producers to manufacture or market the two sets of goods in question.

6.10 Shared Marketing Strategies Junior users have sometimes tried to argue that, although on paper, their goods or services are identical or highly similar to those of the senior user, in fact they can be differentiated because the junior goods are aimed at a different class of consumers (e.g.

188 Skysoft v OHMI (n 103), [25]. 189 Winkworth Office Interiors Ltd v Winkworth Franchising Ltd, Trade Marks Registry (Appointed Person), O/163/14, [39]–[42]. The Appointed person cited examples of named estate agents who provided such services, and also dismissed the relevance of the fact that often the estate agents sub-contracted this work out because they nevertheless offered the service under their own brands. 190 Scentura Creations Ltd v Patrick Cox Ltd, Trade Marks Registry (Appointed Person), O/471/00, [35]. 191 Ibid. 192 Case T-227/11 Wall v OHMI EU:T:2012:375, [48]. 193 Sergio Rossi v OHMI (n 89). 194 Ibid, [63].

130 Similarity of Goods and Services professionals versus end users) or at a different price bracket. This argument was summarily dismissed by the CJEU in T.I.M.E. ART, with the court observing that marketing strategies may vary over time.195 As a matter of principle, a trade mark registration protects a notional and fair use of the goods specified, and to limit the protection to how the senior user actually has used the mark does not give full effect to this, and instead focuses on how the mark has been used at one particular moment in time.196 These difficulties may be particularly acute in the case of opposition to registration cases, where the junior user (and indeed sometimes the senior user) will frequently not have begun use of the mark in question, so the marketing strategy may be speculative. However, even in infringement cases where the parties’ business offerings are entrenched, the fact remains that the senior specification is seldom limited to one marketing strategy and businesses may evolve over time. Thus, to restrict protection based on marketing strategy would be to deprive the senior user of the full benefit of his trade mark. For example, in Maier v ASOS,197 the senior user was a manufacturer of specialist cycling clothing which owned a registration for ASSOS which included both specialist cycling clothing and various items of general casual clothing, such as t-shirts and jackets. Although it had produced a range of casual clothing that would not necessarily be worn during cycling, this had nevertheless been sold through specialist cycling retailers. The defendant had used the mark ASOS for fashion clothing. At first instance, the judge had found that, because of the different target markets, there was no confusion, even though there was an overlap between the registered senior goods and the junior goods. Despite the fact that, following Specsavers,198 there is an increasing emphasis of context and actual use when judging confusion, the Court of Appeal found that, by basing herself on the actual use by the senior user, rather than notional and fair use of the mark as registered and ways the mark might be used in the future, the judge at first instance had not given full effect to the registered trade mark. Additionally, paying attention to marketing strategy, particularly how the brand has been positioned, can introduce an arguably undesirable degree of subjectivity to the similarity of goods analysis, as can be seen in D Jacobson,199 where the parties’ experts clashed on whether the junior brand (and hence goods) was ‘retro’ or ‘cutting edge’. Indeed, it might also be observed that the introduction of expert evidence on branding adds expense and complication to litigation. An analogous argument, this time proposing that the goods be considered similar because of their shared marketing strategy in that all were ‘luxury’ or ‘haute couture’ goods was rejected by the GC in Compagnie des montres Longines, Francillon v OHMI. 195 Case C-171/06 P T.I.M.E. ART v OHIM EU:C:2007:171, [59]. This has been followed by the GC in Case T- 585/10 Aitic Penteo v OHMI EU:T:2012:251, [60]; Case T-363/06 Honda Motor Europe Ltd v OHIM EU:T:2008:319, [63]; Singer v OHIM (n 33), [36]; Case T-382/12 Kampol v OHMI EU:T:2014:563, [62]–[63]. 196 See on this point Schuh Limited v SHHH . . . Limited [2011] CSOH 123, [18]. 197 Maier v ASOS Plc [2015] EWCA Civ 220, [110]–[114]. 198 Case C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd EU:C:2013:497. See further Chapter 6 of this book. 199 D Jacobson & Sons Ltd v Globe Ltd [2008] EWHC 88 (Ch), especially [202]–[206].

Balancing the Similarity of Goods/Service Factors 131 There the goods in question were clothing on the one hand and optical sunglasses, watches, and jewellery on the other. The senior user had argued that in spite of the differences between those goods, they were to an extent interchangeable because consumers intent on making a ‘luxury’ purchase might buy any of that range of goods in an ‘impulsive and hedonistic manner’. This was rejected by the GC which, while not disputing that such purchasing decisions might occur, found that this would be effectively ignoring the need for goods to be similar under the EUTM Regulation.200

7. Balancing the Similarity of Goods/Service Factors A note of caution is necessary here. While describing each of the factors separately is necessary to understand what is required for each one, in practice, the factors are frequently interrelated. Additionally, often the factors may point in different directions, with some suggesting that the goods are similar and some suggesting that they are not. Indeed, this is envisaged by the Canon test, as goods are unlikely to, for example, be both complementary and in competition with each other. How the various factors are balanced is difficult to capture in a factor-by-factor description, although in other work, one of the authors has tracked the frequency with which each of the factors has led to a finding of similarity of goods or services.201 It is also heavily dependent on the particular sets of goods or services being considered and is complicated by the fact that, unlike in the case of similarity of marks, not every potentially relevant factor is mentioned in every case. However, the EUIPO Guidelines202 have suggested that there are certain factors which are particularly influential in the finding of similarity of goods, namely: • Usual origin (what the authors of this work have termed ‘Where it is common in the trade for the goods to have the same manufacturer or source’) • Purpose • Nature • Complementarity • Whether the goods are in competition. The Guidelines class other factors as less important, namely: • Method of use • Distribution channels • Relevant public (what the authors of this work have termed shared end users).203

200

Longines, Francillon v OHMI (n 42), [55]–[56]. Fhima and Denvir (n 16), 334. 202 EUIPO Guidelines, Part C, section 2, ch. 2, pp. 36–37. 203 Ibid, p. 37. 201

132 Similarity of Goods and Services Research by one of the authors and published elsewhere found that none of the factors were hugely influential, with the most influential factor (distribution channels) present in only 18% of the cases where similarity of goods was found.204 This disparity between the research and the EUIPO Guidelines can perhaps be attributed to the fact that the Guidelines are somewhat impressionistic, rather than being a statistical analysis. As such, the impression of the importance of this factor may have been distorted by the fact that, while there are many cases where distribution channels are discounted because they are universal, for example, supermarkets. In fact, there are also a significant number of cases where the distribution channels are more specialist and so are given more weight by the courts. In common with the Guidelines, the author’s research found that complementarity was one of the more influential factors205 and method of use the least influential, presumably because it overlaps so significantly with nature and intended purpose of the goods.206 The research did not consider the impact of common origin in the trade. However, it is the impression of the authors that this factor has been granted particular importance because of its grounding in consumer perception.

8. Disclaimers Attempts by trade mark applicants to disclaim otherwise conflicting goods (and hence to avoid similarity of goods problems) have met with limited success. Disclaimers are, in principle, permissible. However, the fact that a fluid, global appreciation is taken to similarity of goods means that, while the disclaimer may prevent the goods from being identical, the junior goods can remain similar to the disclaimed goods. To take an example, pharmaceutical and veterinary preparations, except medicines to combat diseases in connection with the central nervous system, remained similar to antiepileptics, notwithstanding the disclaimer, because both were pharmaceuticals intended to treat human health problems, were aimed at the same consumers and had the same distribution channels.207 In another example, limiting the junior goods to ‘Spanish sparkling wines’ did not prevent a conflict with ‘wines originating from France’ because both were essentially wines.208 The UKIPO’s Manual of Trade Marks Practice gives an example of an effective disclaimer: where the senior goods are ‘modems’ and the junior goods ‘electrical machines for use in the Office’, merely disclaiming ‘modems’ would be insufficient. Instead it would be necessary to state ‘not including modems or

204 Fhima and Denvir (n 16), 334. 205 Ibid, 333. 206 Ibid. 207 Longevity Health v OHMI (n 34), [22]. See similarly, Case T-33/08 Bastos Viegas v OHIM EU:T:2009:197, [27]. See similarly, Alfa Wassermann v EUIPO (n 54), [31]—discussed above—(senior pharmaceuticals stated to be for use in oncology, junior specification limiting registration to pharmaceuticals ‘not for use in oncology’ ineffective). 208 Case T-29/04 Castellblanch SA v OHIM EU:T:2005:438, [52].

Conclusion 133 telecommunications or computing apparatus’ in order to capture all goods that would fall within the junior specification and be similar to the senior goods.209

9. A Postscript: EUIPO’s Database Initiative for Comparisons TheEUIPO provides a database, the ‘Similarity Tool’,210 by which users can and examiners must conduct a similarity search by entering the Nice class number and textual description of the goods or services to be compared. The database produces a rating for how similar these goods or services are from a choice of high, similar, low, and dissimilar. The search outcomes are based primarily on decisions from the CJEU, GC, and the EUIPO, rather than algorithms. Perhaps as a consequence of this, the database is not comprehensive. Additional services are also possible where national IP offices have entered data about how goods or services would be compared in their jurisdictions. Some tribunals have doubted the utility of this service. For example, in RIVIERA,211 the Hearing Officer notes the disclaimer on the front page of the database stating that it is not legally binding. As a consequence, he felt it necessary to conduct his own comparison of the goods in question. Looking to the future though, we may see a greater role for the use of machine learning and artificial intelligence in providing at least a starting point for the similarity of goods analysis.

10. Conclusion While similarity of goods is generally more straightforward to assess than similarity of marks, it does contain areas of complication, such as complementarity. The challenge in these instances is to ensure that the ultimate question is always kept in sight—are these goods similar enough to cause confusion?—rather than engaging in an overly analytical discussion of the relationship between goods. Taken at face value, the Canon test is somewhat misleading. While it is an important starting point for assessing the similarity of goods, it is both under and over inclusive, in the sense that often the factors listed will not all be considered and equally well, factors which are not mentioned, such as distribution channels and common origin in the trade, play a vital role. The Canon test also does not make clear that, in practice, there tends to be a hierarchy of factors, with some, particularly those that focus on consumer perception, being more important than others. That said, it does provide a key reference point for the similarity of goods analysis which is consistently applied (at least in part) by the courts, and which has formed the backbone of a relatively stable body of case law. 209 UK Manual of Trade Marks Practice, Examination Guide Part C, Exclusions, p.189. 210 EUIPO Guidelines, Part C, section 2, ch. 2, p. 9. The Similarity Tool can be accessed at https://euipo.europa. eu/ohimportal/en/databases. 211 Riviera Home Furnishings Pvt. Ltd v Riviera Holding B.V., Trade Marks Registry (Opposition), O/634/17, [48].

5 Distinctiveness of the Marks 1. Introduction 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.

1.1 Overall Distinctiveness and the Distinctive and Dominant Elements of Trade Marks Distinctiveness appears at two key points in the likelihood of confusion analysis. First, the CJEU has stated that there is a greater likelihood of confusion where the senior mark has an enhanced degree of either inherent or acquired distinctive character.1 This looks at the distinctiveness of the mark as a whole for the purposes of determining the overall scope of protection of the mark. Secondly, the CJEU has instructed those considering conflicts between trade marks to pay particular attention to the distinctive and dominant elements of the parties’ marks when comparing them,2 taking into account aspects like the meaning, size, and position of the elements. This is because it is the distinctive and dominant elements that will be most readily noticed by consumers when comparing the marks either consciously or subconsciously. This chapter focuses on the first of those uses of distinctiveness, with the second having been discussed

1 Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport (CJEU) EU:C:1997:528, [25]. 2 Ibid, [23]. The Confusion Test in European Trade Mark Law. Ilanah Fhima and Dev S. Gangjee, Oxford University Press (2019). © Ilanah Fhima and Dev S. Gangjee 2019 DOI: 10.1093/oso/9780199674336.003.0005

The Role of Distinctiveness in Assessing Likelihood of Confusion 135 extensively in the chapters on similarity of marks, and particularly in the chapter on composite marks.

2. The Role of Distinctiveness in Assessing Likelihood of Confusion 2.1 Jurisprudence of the CJEU There is no mention of extra protection against confusion for particularly distinctive marks in the substantive articles of the 2015 Revision of the EU Trade Mark Directive (TMD 2015) and its equivalents.3 Instead, only similarity of signs and similarity of goods are expressly mentioned as components of the likelihood of confusion test. The first sign that confusion would be rendered more likely under the European scheme if the senior mark has an enhanced reputation came in one of the earliest trade mark cases under the Directive, SABEL v Puma.4 There the CJEU noted ‘the more distinctive the earlier mark, the greater will be the likelihood of confusion’.5 The route by which consideration of distinctiveness entered into the case was a somewhat circuitous one, with the German Bundesgerichtshof having asked the court whether there could be confusion where the senior mark was not particularly well known but the two marks shared conceptual content.6 The relevance of this factor seems to have been almost taken for granted by both the CJEU7 and Advocate General Jacobs,8 who focused most of their analysis on dispelling the idea that association without confusion could suffice for Article 5(1)(b) of the Trade Mark Directive 1988 (TMD 1988). Its origins appear to lie in the German jurisprudence. A look back at the Bundesgerichtshof ’s reference in SABEL v Puma reveals an explanation of why marks with enhanced distinctiveness (both acquired and inherent) should be provided with extra protection: Another question . . . is whether a sign with earlier priority can have a particular distinctiveness, for instance due to its design or its recognition among the relevant public, which therefore would extend its scope of protection de iure. Would this scope then also extend to include the use of such composite marks when individually assessed the corresponding similar element would not have significance as to characterize the composite sign as a whole? This is because of the principle that a likelihood of confusion is all the greater, the more distinctive—either inherently or acquired—the protected sign is. (see BGHZ 113, 115, 124 f -SL). A higher degree of

3 Although, as discussed below, it is mentioned within the recitals. 4 SABEL (n 1). 5 Ibid, [24]. 6 Ibid, [10]. 7

Ibid, [17]–[23].

8 SABEL (n 1), [33]–[55].

136 Distinctiveness of the Marks distinctiveness also justifies an increased protection against the use of similar signs. The fact that the relevant public would rather know how to distinguish between the modified sign and a notorious sign can therefore not be deduced from the notoriety of a sign. The increased distinctiveness rather also entails increased effective protection against modified denominations.9

This approach has a significant pedigree, with the following description in a 1952 case: the claimant’s mark ‘Widia’ has world fame. Such distinctive signs would forcefully need to be protected . . . Competitors would need to create a particularly wide distance to these marks in order to avoid deception. This is because the more notorious a mark is the higher the risk is that a consumer would associate [in German: ‘In Verbindung bringen’] a junior sign which even only remotely leans on the older sign. Due to false conceptions they would purchase goods sold under the new sign and thus would increase the turnover of the goods sold under the confusing sign based on the reputation of the older sign.10

Thus, the German approach was that, where a mark is well known or particularly distinctive, confusion is more likely, and the idea that the consumer would retain a more accurate mental picture of a distinctive mark, making confusion less likely was rejected. Once the concept had found this entry point, it seems it was here to stay, and in Canon, the CJEU reiterated its position rather uncritically, noting that ‘marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character’.11 The court noted that concerns that taking reputation into account could lengthen the registration process were irrelevant, and in any event unfounded,12 and also noted that its position reflected the tenth recital of the Directive, which states: . . . 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, [on] the association which can be made with the used or registered sign, [and on] the degree of similarity between the trade mark and the sign and between the goods or

9 ‘Springende Raubkatze’ BGH GRUR Int 1996, 60, 62. The translation of this case, and the 1952 case are both kindly provided by Dr Marc Mimler. 10 ‘Wida’ BGH GRUR 1952, 35, 36. This was the prevalent approach under the old German Trade Mark Act (Warenzeichengesetz)—see: ‘Indorektal/Indohexal’ BGH GRUR 1995, 50, 51–52; O. F. Freiherr von Gamm, Warenzeichengesetz (C. H. Beck, 1965) §31 [24]; R. Busse and S. Starck, Warenzeichengesetz (6th edn, Walter de Gruyter, 1990) §31 [77]; R. Ingerl and C. Rohnke, Markengesetz (3rd edn, C. H. Beck, 2010) §14 [503]. This approach was however also criticised in the literature. R. Storkebaum and A. Kraft, Warenzeichengesetz (Springer, 1967) §31 [14] state that confusion would be less likely where the senior sign is notorious, although they nevertheless favour greater protection for stronger signs on the normative basis of protecting entrepreneurial achievements (‘unternehmerische Leistung’). 11 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (CJEU) EU:C:1998:442, [18]. 12 Ibid, [21] and Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (AGO) EU:C:1998:159, [43].

The Role of Distinctiveness in Assessing Likelihood of Confusion 137 services identified, constitutes the specific condition for such protection [emphasis added].13

The CJEU also stressed the role of distinctiveness as an interdependent factor in the confusion analysis, with a high level of distinctiveness able to compensate for a lower level of similarity of goods or marks.14 However, the court noted that there can be no Article 5(1)(b) action, even where a senior mark is highly distinctive, unless the goods or services are similar to at least some extent.15 The CJEU again stated the relevance of both inherent distinctiveness and reputation and its interdependent impact in Lloyd, this time giving more detailed guidance about how such distinctiveness can be detected16 (discussed in more detail below). In Marca Mode, the CJEU was asked whether confusion should be presumed where the senior marks had a particularly high reputation or inherently distinctive character and the junior mark was so close that association was likely. This approach was rejected by the CJEU, which stressed that a likelihood of confusion must always be demonstrated under Article 5(1)(b) of the TMD 1988.17 However, the court once again noted that it would be easier to show that such confusion was present if the senior mark was particularly distinctive.18 In summary, the CJEU has stuck steadfastly to the position that enhanced distinctiveness, whether inherent or acquired, will make it easier to show a likelihood of confusion, although it has done little to explain the rationale for this approach. In particular, enhanced distinctiveness can compensate for a lower level of either similarity of goods or signs. However, it cannot compensate for a total absence of either of those factors, or for a lack of likely confusion.

2.2 Critical Response This enhanced protection where a mark has a reputation met with a critical response. The CJEU has provided little justification for why it should be that confusion is more prevalent when a mark has a reputation. For example, there is no consideration of how consumers perceive such marks, just a reference to Recital 10 of the TMD 1988, which itself also provides no explanation. Indeed, commentators have argued that the court’s approach is at odds with consumer reactions to such marks.19 One of the cannons of 13 Canon (CJEU) (n 11), [15]. 14 Ibid, [17]. 15 Ibid, [22]. 16 Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV EU:C:1999:323, [20]–[24]. 17 Case C-425/98 Marca Mode CV v Adidas AG (CJEU) EU:C:2000:339, [34]. 18 Ibid, [40]–[41]. 19 See, e.g., J. Phillips, ‘Strong Trade Marks and the Likelihood of Confusion in European Trade Mark Law’ (2006) 1 Journal of Intellectual Property Law & Practice 385, 392; A. Griffiths, ‘The Impact of the Global Appreciation Approach on the Boundaries of Trade Mark Protection’ [2001] Intellectual Property Quarterly 326, 336; R. Jacob, ‘Trade Marks and the Olympic Games Throughout the Years’ (2001) 23(1) European Intellectual Property Review 1, 1.

138 Distinctiveness of the Marks trade mark law in the EU is that consumers suffer from imperfect recollection, and so will not accurately remember small differences between trade marks, particularly as they generally will not have the opportunity to compare the senior and junior trade marks side by side in a market situation. It is argued though that where trade marks are particularly distinctive, consumers will in fact recall them better, and that this should make confusion less likely. As described above, this argument was rejected by the German courts pre-harmonisation and in its immediate aftermath, though really this is an empirical question and it is hard to know which approach reflects the reality of consumer perception in the absence of robust psychological evidence. Even those who argue that distinctiveness makes confusion less likely accept the narrow exception that, if a mark has a high level of acquired distinctive character, this may be an indication that the goods bearing it originate from a large company that is more likely to diversify its product offering into related goods, as compared to a smaller company.20 This though only applies in the cased of acquired distinctiveness, and will only compensate for a lower level of similarity of goods, and not for a lower level of similarity of marks. Another rare example involves the trade mark MONEY SAVING EXPERT21 and the junior sign MONEY CLAIMING EXPERT. The senior user had established a reputation using the former mark on its financial advice website, which meant that when a junior user made ‘cold calls’ calling itself by the latter, similar sounding sign, consumers heard this as ‘Money Saving Expert’ on account of their familiarity with the earlier use. This is less a case of imperfect recollection and more one of filling in the gaps by hearing what one expects to hear based on prior experience and familiarity with the senior mark. It is interesting to note that using distinctiveness of marks in order to assess for likely confusion is not a purely European invention. Both inherent and acquired distinctiveness have played a significant role in the US analysis of confusion for a number of years. While there is no one test for confusion in the USA,22 the Third Restatement of Unfair Competition takes ‘the degree of distinctiveness of the other’s designation’ as a relevant factor in assessing likely confusion23 and the influential Polaroid case mentions ‘the strength of his [senior] mark’ as the first factor in its multifactor test for likelihood of confusion.24 As in Europe, the inclusion of this factor has been criticised. From an historical point of view, Bone argues that it has little to do with likelihood of confusion and was instead an attempt to resolve a disagreement between the Second Circuit judges by limiting the monopoly power of trade marks.25 Similarly, Beebe sees the inclusion of inherent 20 Griffiths (n 19); Jacob (n 19). 21 Lewis v Client Connection Ltd [2011] EWHC 1627 (Ch), [24]. 22 Instead, each Circuit has its own slightly different test, see e.g. B. Beebe, ‘An Empirical Study of the Multifactor Tests for Trademark Infringement’ (2006) 94 California Law Review 1581. 23 Restatement of the Law (3d) of Unfair Competition (American Law Institute, 1995) §20. The Restatements are attempts to codify US law, which are widely accepted by judges and the academy. 24 Polaroid Corp v Polarad Electronics Corp 287 F 2d 492, 495 (2d Cir 1961). 25 R. G. Bone, ‘Taking the Confusion out of “Likelihood of Confusion”: Towards a More Sensible Approach to Trademark Infringement’ (2012) 106 Northwestern University Law Review 1307, 1342, because ‘technical trade

Distinctiveness for Infringement and Registrability Purposes 139 distinctiveness as a policy-orientated attempt to encourage the use of inherently distinctive, rather than descriptive, marks.26 Like the European commentators, Bone sees little reason why inherent distinctiveness in particular should lead to a greater likelihood of confusion. However, he notes that where a mark has strong acquired distinctiveness, this may suggest that there are more consumers likely to be confused (because there are more people familiar with the mark) and so the harm caused by confusion will be greater.27 Similarly, Greene and Wilkerson criticise the courts for failing to recognise the distinction between inherent and acquired distinctiveness, and their different impacts on likely confusion.28 In both Europe and the United States, it appears that courts have found a role for both acquired and inherent distinctiveness without properly articulating the difference between the two, and the impact that this may have on consumer perception. It seems likely that in both jurisdictions, other policy objectives are being fulfilled of ‘rewarding’ those who chose distinctive marks. It is unclear why this should be so though. In terms of inherently distinctive marks, it is arguable that creativity does not merit a reward in the trade mark sphere, and certainly, elsewhere the European system makes no distinction between the ‘trade mark worthiness’ of inherent and acquired distinctiveness. Where the mark has acquired distinctiveness, the impact that this has on consumer recognition and perception, and consequently on likelihood of confusion, should be its own reward.

3. The Relationship Between Distinctiveness for Infringement and Registrability Purposes 3.1 Definitions of Distinctiveness There is a significant overlap between distinctiveness for infringement purposes and that under the absolute grounds for the refusal of registration. Under Articles 4(1)(b) of the TMD 2015 and its predecessors, a mark cannot be registered if it is devoid of distinctive character. This is inherent distinctive character as the properties of the mark itself are considered in the absence of use and education of consumers to recognise the mark. Moreover, although the public policy underlying Articles 4(1)(c) (descriptiveness) and 4(1)(d) (genericity) of the TMD 2015 and its predecessors is to keep certain marks free for other traders to use, it is also the case that these marks will not be inherently distinctive. Acquired distinctiveness is also recognised, as the objections based on

marks’ (i.e. inherently distinctive marks) were thought to pose less of a monopoly risk, so granting them more expansive protection was not a problem. 26 Beebe (n 22), p.1639. 27 Bone (n 25), pp. 1342–6. 28 T. D. Greene and J. Wilkerson, ‘Understanding Trademark Strength’ (2013) 16(3) Stanford Technology Law Review 535.

140 Distinctiveness of the Marks lack of inherent distinctiveness found in Articles 4(1)(b) to (d) of the TMD 2015 and its predecessors can be overcome through use if consumers are educated to recognise the otherwise non-distinctive sign as a trade mark denoting a single undertaking. In defining distinctiveness for the purposes of assessing likelihood of confusion, the CJEU has drawn heavily on the definitions of distinctiveness employed for the purposes of registrability. Thus, in Lloyd, the CJEU stated in relation to inherent distinctiveness that this factor should be considered, including the question of whether the mark or any of its elements are descriptive.29 In defining acquired distinctiveness, the court cited the definition and test used in the registrability case of Windsurfing Chiemsee,30 and also reiterated the warning given in that case that it is impossible to specify a set percentage of consumers who must recognise a mark in order for it to have acquired distinctiveness.31

3.2 Where the Evaluation of Distinctiveness Differs Between Registrability and the Confusion Assessment When assessing distinctiveness for likelihood of confusion purposes, courts generally consider whether the level is average, high, or low. However, it is perfectly possible that a court, when assessing distinctiveness, might come to the conclusion that in fact, the distinctiveness of the mark is so low that it does not pass the minimum threshold. This could be because of a difference in opinion from the registering authority regarding inherent distinctiveness, but it could also be that market conditions have changed since registration so that a mark which was once recognised by consumers is no longer recognised. The logical outcome of this would be that the mark should not in fact be a registered trade mark at all. This causes particular difficulties where the junior mark is an EU trade mark and the senior mark is a national or international trade mark given the potential for conflict between the different authorities and the question of which is ‘supreme’. The CJEU was faced with this problem in relation to the senior national and international figurative mark that included the words F1 Formula One, including F1-LIVE and some relatively banal figurative elements and the international word mark F1.32 The General Court (GC) found that the terms F1 and FORMULA 1 were generic, and therefore had no distinctiveness for the purposes of assessing confusion. However, the CJEU annulled this decision. The European trade mark system is premised on the coexistence of national and EUTMs. Thus, it was outside the scope of EUIPO’s and the GC’s powers to comment on the validity of national trade marks.33 While merely terming a mark as descriptive or generic does not actually invalidate it, even characterising a mark in this way was seen

29 Lloyd Schuhfabrik (n 16), [22]–[23]. 30 Case C-108/97 Windsurfing Chiemsee Produktions-und Vertriebs GmbH (WSC) v Boots-und Segelzubehör Walter Huber and Franz Attenberger EU:C:1999:230. 31 Lloyd Schuhfabrik (n 16), [22]–[24]. 32 Case C-196/11 P Formula One Licensing v OHIM EU:C:2012:314. 33 Ibid, [38]–[47]. See also, e.g., Case T-486/12 Golam v OHMI EU:T:2014:508, [55].

Inherently Distinctive Marks 141 to be a problem as it would ‘bring about a situation likely to eliminate the national protection of those marks’ since it would pave the way for the registration of similar trade marks on the basis that the senior mark was not distinctive enough for those similar marks to result in confusion.34 While it is possible to see the diplomatic reasons why the CJEU has taken this approach, it surely puts EUIPO and the GC in the invidious position of not being able to recognise the truth. If a mark lacks distinctiveness, tribunals should be free to say so. Merely stating that, in the opinion of a particular tribunal, a mark should not be registered does not result in it being invalidated unless the correct legal steps are followed to make this happen. Moreover, it should not inevitably result in the registration of marks that are so similar that they would negate the value of the senior registered mark since distinctiveness is only one element of the confusion analysis, and the marks may still be found to be confusingly similar based on the proximity of the marks and the goods or services. Since these concerns are primarily based on the coexistence of EUTMs and national marks, one might expect that EUIPO and the GC should be free to comment on the lack of distinctiveness of senior EUTMs. However, the EUIPO Guidelines have adopted the position that the F1-LIVE approach should apply to both national marks and EUTMs because both enjoy a ‘presumption of validity’.35 In the UK, the IPO has also adopted a similar approach, explicitly following F1-LIVE, and has ruled out a challenge to a senior mark’s distinctiveness as part of the confusion assessment.36 However, this would not prevent a junior mark holder whose application is challenged on the basis of likely confusion from counterclaiming for the invalidity under s.47 of the Trade Marks Act 1994. Likewise, the German Bundesgerichtshof has found that, when considering distinctiveness for confusion purposes, the judge may not deny the mark any and all protection.37

4. Inherently Distinctive Marks The CJEU in its jurisprudence detailed above has repeatedly stated that both inherent and acquired distinctiveness should be considered as part of the likelihood of confusion assessment. However, it has done little to explain how this should be done, save for a brief reference to the need to consider whether the mark is descriptive in Lloyd.38 In practice, the inherent distinctiveness analysis has often been eclipsed by the 34 Ibid, [45]. 35 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch.5, pp. 5–6. 36 Lowther v Formula One Licencing B.V., Trade Marks Registry (Appointed Person), O/396/14, [26]. For a somewhat awkward example of this in operation see Whyte and Mackay Ltd v Origin Wine UK Ltd & Anor [2015] EWHC 1271 (Ch), [28], where the judge found that the mark ORIGIN would be seen by consumers as describing where the goods came from and therefore lacked distinctiveness, but at the same time held that ‘Formula One establishes that, since its validity has not been challenged, the Word Mark must nevertheless be deemed to have the minimum degree of distinctive character for it to be validly registered; but no more than that’. 37 ‘Langenscheidt Yellow’ (2015) 46(3) IIC 372, 376. 38 Lloyd Schuhfabrik (n 16), [23].

142 Distinctiveness of the Marks arguably more straightforward (although also more evidence intensive) consideration of acquired distinctiveness, so much so that at least one tribunal has questioned the necessity for a consideration of inherent distinctiveness at all where a mark has clear acquired distinctiveness.39 Indeed, there are few examples of marks being found to be highly distinctive, with tribunals instead focusing on whether the distinctiveness of marks with relatively low levels of distinctiveness should be taken into account. One question that has been considered in some detail in the UK is whether the CJEU’s jurisprudence requires tribunals to look at whether the senior mark has lower than average distinctive character, or whether the enquiry is limited to considering whether the senior mark has enhanced distinctive character that will make confusion more likely.40 Based on the mention of descriptive marks in Lloyd and subsequent cases, the Appointed Person found that the former approach was the correct one, though in light of the F1-LIVE case, it would seem that there is a limit to how low the distinctiveness of a mark can be considered to be.

5. Descriptive Marks The fact that the CJEU has ruled out finding that a mark’s level of distinctiveness is so low that it should not have been registered means that there should be few if any examples of marks found to be descriptive during the assessing of distinctiveness for confusion purposes. The only exception might be a mark which has a primary descriptive meaning but has clearly acquired distinctive character, although generally the tribunal might be expected to go straight to the evidence of acquired distinctiveness in such a case. An exception to this involves the mark PINK for shirts, where the court found that although the mark had acquired distinctiveness through use, this was effectively cancelled out by the fact that the word ‘pink’ could describe the colour of a shirt. Thus, the mark was not considered to have enhanced distinctive character.41 It is worth remembering though that descriptiveness is a highly contextual question. Thus, to take an example from a prominent case,42 to a fluent English speaker, the term DOGHNUTS would be clearly descriptive, albeit misspelled. However, to an average Spanish consumer it would have no meaning at all and so would be distinctive. Analogously, whether or not a mark is descriptive will depend on the goods or services for which it is used. For example, the mark MARINA ALTA may well have had a 39 Oska’s Ltd v Morgan SA, Trade Marks Registry (Appointed Person), O/317/04, [15]. 40 Digipos Store Solutions Group Ltd v Digi International Inc [2008] EWHC 3371 (Ch), especially [40]–[43]. 41 Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch). 42 Case T-569/10 Bimbo v OHMI EU:T:2012:535, [92], upheld by the CJEU in Case C-591/12 P EU:C:2014:305. See similarly, Case T-425/09 Honda Motor v OHMI EU:T:2011:576, [29] (unlikely that non-native English speakers would make the link between the term BLAST and the workings of an internal combustion engine, so the mark was not descriptive for exhaust systems for cars).

Weak and Allusive Marks 143 descriptive meaning in relation to boating, but had a ‘certain distinctive character’ in relation to alcoholic drinks.43 Similarly, RED BULL would be descriptive of crimson male cattle, but was ‘innately original’ in relation to a drink.44

6. Weak and Allusive Marks Perhaps surprisingly, it is difficult to find examples of marks that have been characterised as inherently weak or allusive as part of the likelihood of confusion analysis. It is submitted that there are two main reasons for this. First, inherent distinctiveness may not be considered if there is substantial evidence of acquired distinctiveness. Secondly, issues of inherent distinctiveness tend to arise most frequently before the GC in appeal cases where the lower tribunal has found that, because the distinctiveness of the senior mark is weak, there cannot be confusion. As is confirmed by the CJEU in TIME.ART45 this approach has been repeatedly rejected, with the GC emphasising that distinctiveness is just one factor in the likelihood of confusion assessment and one which cannot override the importance of similarity of marks and of goods.46 The Boards of Appeal has frequently treated low distinctiveness as fatal to likelihood of confusion, without considering similarity of marks and goods. Those decisions are routinely annulled and often decided effectively on the basis of similarity of marks and goods only without the GC reaching a conclusion on what the mark’s level of distinctiveness actually was. The few examples of marks which were found to have weak distinctive character include: • ELIXIER had only a weak distinctive character because it differed by only one letter from the dictionary word ‘elixir’, which had a laudatory connotation with regard to drinks.47 • FLEX had a weak distinctive character in relation to hair products (though this was agreed by the parties).48 • BLAST arguably had a weak distinctive character in relation to exhaust systems for cars as it described the workings of an exhaust system.49

43 Case T-393/11 Masottina SpA v OHIM EU:T:2013:241, [53]. See similarly, Case T-186/02 BMI Bertollo v OHIM EU:T:2004:197, [54] (DIESEL descriptive for motors and engines, but these goods did not form the basis of the opposition). 44 ‘Red Bull v Bulldog’ (2014) 45(8) IIC 989, 991. 45 C-171/06 P T.I.M.E. ART v OHIM EU:C:2007:171, [41]. 46 Frequently cited adumbrations of this principle are Case T-112/03 L’Oréal v OHIM EU:T:2005:102, [61], upheld in C-235/05 P L’Oréal v OHIM EU:C:2006:271 and Case T-134/06 Xentral LLC v OHIM EU:T:2007:387, [69]– [71]. See also Chapter 6, section 8.8. 47 Case T-157/10 Barilla v OHIM EU:T:2012:148, [29]. 48 L’Oréal v OHIM (n 46), [59]. 49 Honda v OHMI (n 42), [28]–[30].

144 Distinctiveness of the Marks

6.1 Surnames Following the CJEU’s Nichols ruling,50 regarding the inherent distinctiveness for registrability purposes of surnames, both the GC and the Appointed Person have adopted the position that surnames cannot be presumed to have low distinctive character. Instead, the correct approach is to conduct an analysis of the specific name concerned, taking into account practices in the market sector concerned. Thus, the name PETER STORM was found not to be weakly distinctive in relation to clothing, with the GC cautioning that the mark had to be treated as a whole, rather than broken down into its individual components, which in that case corresponded to dictionary words.51 This case is an interesting one because the senior user seems to have done little to demonstrate the inherent distinctiveness of its mark with the assumption being that the mark would not lack distinctiveness unless this was specifically demonstrated. On the other hand, the name MORGAN for clothing was found to be devoid of inherent distinctive character because consumers in the UK were held to be aware that the use of names as trade marks was common in the clothing field and that it was necessary to differentiate between clothing traders who shared the same surname by means to first names where the surname was a common one (as in this case) but not where it was uncommon.52

6.2 Numbers In SEVEN/SEVEN SUMMITS,53 the GC rejected the idea that a number (in this case the number seven spelled out in letters) was necessarily of low distinctive character. While numbers may often indicate the quantity, weight, or serial number of the goods on which they are used, this will not be the case where the number has no link to the goods on which it is being used. Since there was no link between the number seven and the senior goods (luggage), the mark had normal inherent distinctive character. Of course, this is not to say that in some cases, a mark consisting primarily of a number will not be of low distinctive character, as was the case in SEVEN FASHION SHOES, where marks consisting of the word SEVEN spelled out in fancy script for leather goods was accepted to be of low distinctive character.54

50 Case C-404/02 Nichols v Registrar of Trade Marks EU:C:2004:538. 51 Case T-30/09 Engelhorn v OHIM EU:T:2010:298, [77]. 52 Oska’s v Morgan (n 39), [37]–[39]. 53 Case T-179/11 Sports Eybl & Sports Experts GmbH EU:T:2012:254, [53]–[63]. 54 Case T-244/10 Tsakiris-Mallas v OHMI EU:T:2012:219, [40]–[44] and [61] (although not so low as to render it unregisterable).

Weak and Allusive Marks 145

6.3 Letter Combinations Arnold J (as he then was) held55 that the letter combination BDO was inherently distinctive (as well has having acquired distinctiveness) in a way that favoured a finding of likely confusion.56 While the mark’s distinctiveness had been challenged on account of its simplicity, this was rejected. Rather than seeing the mark’s brevity as a challenge to its distinctiveness, the judge viewed it as rendering the mark more memorable. The mark did not describe or allude to the senior services and the only evidence of third parties using such a combination of letters was the (entirely unrelated) British Darts Organisation and British Druid Order. The same judge held the letters OCH to be distinctive in a case involving financial services, rejecting the argument that if the mark was read as the initials O-C-H, rather than the name ‘Och’ it could not be inherently distinctive.57 Somewhat analogously, the single letter ‘e’, albeit in stylised form, was held to have a ‘fairly high degree of distinctive character’. While the letter was commonplace in a generalised context, it was not widely used in the logos of vehicle rental services in the UK.58

6.4 Shape Marks There are very few examples of confusion cases involving shape marks. However, in Weldebrau59 (Figure 5.1) it was held that the shape of a bottle with a helical neck was of average inherent distinctiveness in relation to various alcoholic and non-alcoholic drinks, although ultimately the combination of another bottle with a helical but different neck, identical goods, and average distinctiveness was insufficient to lead to a likelihood of confusion.60

Figure 5.1 Junior mark (left); Senior mark (right).

55 Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch), [152]. 56 Although confusion was not ultimately found.

57 Och-Ziff Management Europe Ltd & Anor v OCH Capital LLP & Ors [2010] EWHC 2599 (Ch), [104]. 58 Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch), [183]. 59

Case T-24/08 Weldebrau v OHIM EU:T:2010:71, [31] . See also the discussion of this case in Chapter 8, section 2.

60 Ibid, [32].

146 Distinctiveness of the Marks Although the CJEU generally adopts the approach that consumers are not particularly likely to view shapes as distinctive trade marks,61 it follows from the F1-LIVE case that, once a shape mark is on the register, it must be classed as having at least a low level of inherent distinctiveness, which may well be complemented by distinctiveness acquired through use.

6.5 Existence of Similar Marks on the Market It has been suggested that the inherent distinctiveness of marks may be lowered if there are a large number of similar marks being used on the market.62 Conversely, courts have sometimes commented on the fact that few other undertakings are using a similar mark.63 There is some wisdom to this since, much like blurring, if there are a large number of similar marks on the relevant market, the mark in question may be less capable of attracting the attention of consumers. However, this needs to be treated with care. For one thing, tribunals have noted that little can be drawn from the fact that there are similar marks on the register, since marks on the register are often not used, and so will not have come to the attention of consumers. Even when marks are used, evidence may be required as to their effect on consumer perception of the senior mark.64 Additionally, it must be clear that the marks are being used in a form which is close to that used by the senior mark. For example, where the senior mark was a figurative mark including the number seven and ‘seven’ spelled out in letters, the GC stressed the need for the junior user to show that the position, typeface, and ornamental presentation were also present in the third party marks65 The third parties’ marks should also be used for goods or services which are similar to the senior goods.66 For example, the fact that there are a number of undertakings using a mark in the field of cosmetics may have little impact on consumer perception of the mark in the field of fork lift trucks. In addition, the evidence provided to support the existence of widespread third-party use must be robust. For example, evidence that did not make clear which territories the third-party marks were used in was rejected by the GC,67 as were photocopies of labels featuring similar marks since they did not establish that the marks had actually been used, or even registered, in the EU.68

61 Joined Cases C-53/01 to C-55/01 Linde AG, Windward Industries and Rado Uhren AG EU:C:2003:206, [48]. 62 Digipos v Digi (n 40), [57]–[59]. 63 Stichting BDO v BDO Unibank (n 55), [152] (just two other users of the initials BDO in fields unrelated to banking, namely the British Darts Organisation and British Druid Order); Och-Ziff (n 57), [104] (no other use of initials OCH on financial service market). 64 Digipos v Digi (n 40). See analogously Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), [87] (although there were other marks featuring birds on the market for clothing, they were not anthropomorphised as the senior user’s was) and Case T-204/10 Lancôme v OHMI EU:T:2012:523, [45]–[47] and [62]–[63]. 65 Case C-655/11 P Seven for all mankind v Seven EU:C:2013:94, [49]. 66 E.g., the fact that prior uses were in unrelated fields was stressed in Stichting BDO v BDO Unibank (n 55), [152]. 67 Case T-41/09 Hipp v OHIM EU:T:2012:163, [51]. 68 Case T-460/11 Scandic Distilleries v OHMI EU:T:2012:432, [61].

Marks with Acquired Distinctiveness 147

7. Marks with Acquired Distinctiveness The CJEU defined acquired distinctive character for the purposes of establishing confusion and set out how it is to be assessed in Lloyd. The way the CJEU did this was to simply cite the test for acquired distinctiveness character in relation to the proviso to the absolute grounds for the refusal of registration, namely: The market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51).69

What the CJEU did not do was to spell out precisely how much of each of these measures is required, stating instead: It follows that it is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character (see, to that effect, Windsurfing Chiemsee, paragraph 52).70

The question then becomes what level of acquired distinctiveness is required for this extra protection? This is particularly pertinent bearing in mind that a considerable number of marks will have been registered on the basis of acquired distinctiveness. However, acquired distinctiveness is a minimum standard for registration, while enhanced distinctiveness seems to envisage something extra, and indeed the language used by the Court that of ‘particularly distinctive character,’71 ‘strong’ distinctiveness character72 or ‘highly distinctive character’.73 An early UK decision74 suggested that the CJEU intended to limit itself to household names where the enhanced acquired distinctiveness would be obvious and that it would be incorrect to launch into an enquiry as to reputation of the senior mark in every confusion case. This though seems out of step with the way that acquired distinctiveness has been employed in subsequent cases and was doubted in another UK decision, where the appointed person observed that there was no suggestion of such a limitation in the CJEU’s jurisprudence, and consequently, distinctiveness should be

69 Lloyd Schuhfabrik (n 16), [23]. 70 Lloyd Schuhfabrik (n 16), [24].

71 SABEL (n 1), [24]; Marca Mode (n 17), [39]; Canon (AGO) (n 12), [17] and operative part. 72 Lloyd Schuhfabrik (n 16), [24].

73 Canon (CJEU) (n 11), [18]; Marca Mode (n 17), [41].

74 Dallas Burston Healthcare Ltd v Boehringer Ingelheim KG, Trade Marks Registry (Appointed Person), O/048/01, [14].

148 Distinctiveness of the Marks considered as part of the overall assessment of likelihood of confusion in all relevant cases.75 In a similar vein, the GC has observed that the level of reputation required need not be as high as that needed to qualify for protection under the dilution provisions.76 It should be noted though that the Court of Appeal77 has counselled against using acquired distinctiveness as a way of limiting the scope of protection of the marks to the precise goods for which a senior mark has acquired a reputation. Thus, the fact that the senior user had acquired a reputation for cycle wear in particular could not be used to argue that there was limited similarity of goods where a similar mark was used on non- cycling clothing (such as dresses) which fell within the scope of the senior user’s registered goods. This stands to reason as a registered trade mark provides protection for the mark as registered, rather than the mark as used.

7.1 Evidence of Acquired Distinctiveness Broadly following the Lloyd test, tribunals have used a range of factors to determine acquired distinctiveness. Interestingly, there is little evidence of the use of survey evidence to determine what percentage of consumers recognise a given mark, perhaps because of the expense of obtaining such evidence and the uncertainty of whether it will be admitted. Instead, senior users have focused on circumstantial evidence that suggests that their marks are likely to have come to the attention of consumers, such as significant turnover and market share, advertising expenditure and extent to use, as well as third-party evidence of recognition, such as press cuttings. Although it is difficult to generalise, particularly because what is needed to establish a reputation will differ between product markets, it seems that the tribunals have been pretty exacting with the level of evidence required. This is consistent with a higher standard than ‘normal’ acquired distinctiveness sufficient for trade mark registration.

7.2 Turnover and Sales While it is clear that significant turnover will be required to show enhanced acquired distinctiveness, it is impossible to put an absolute figure on what this means. Part of the reason for this may be that what counts as significant enough to demonstrate that a mark will have penetrated the market enough to come to the awareness of consumers will depend on the type of product concerned. For example, sales of £1 million for packets of biscuits that cost £1 each equates to the sale of 1 million units, whereas the same figure for the sale of cars that cost £20,000 each amounts to the sale of just fifty units. 75 Sölen Çikolata Gida Sanayi Ve Ticaret Anonim Sirketi v Growseed Aktiengesellschaft, Trade Marks Registry (Appointed Person), O/241/05, [17]. 76 Case T-274/09 Deutsche Bahn v OHMI EU:T:2011:451, [95]. 77 Maier v ASOS Plc [2015] EWCA Civ 220, [84].

Marks with Acquired Distinctiveness 149 Examples of turnover sufficient to demonstrate enhanced acquired distinctiveness include: • £1 million per annum in the UK for teas.78 • £50 million per annum in the UK for clothing.79 • Between £19,382,231 and £42,105,993, amounting to between 500,671 and 1,000,444 units per annum for clothing.80 • Management of $8.3 billion of assets in Europe, including around $1.5 billion for UK-based clients.81 Examples of turnover that were insufficient to demonstrate acquired distinctiveness include: • Between £1.3 million and £1.8 million per annum in the UK for non-medicated skin products.82

7.3 Advertising Expenditure An example of advertising expenditure sufficient to contribute to inherent acquired distinctiveness is: • £362,500 in the UK in a single year.83 An example of advertising expenditure in cases where enhanced acquired distinctiveness was not established is: • £10–27,000 per annum in the UK.84 Advertising can either be direct, or in the form of sponsorship, as was the case in SEVEN SEAS, where the senior user sponsored the weather forecast which was broadcast on a national channel four times a day.85 Advertising spend should be in the territory where the senior user is trying to prove the reputation, at least in the first instance. 78 Wistbray Ltd v Creative Nature Ltd [2005] EWHC 2072 (Ch), [2]‌and [19]. 79 Oska’s v Morgan (n 39), [43]–[45]. 80 Jack Wills (n 64), [26] and [90]. 81 Och-Ziff (n 57), [12]. 82 Firm of ABX v Gurwitch Products LLC, Trade Marks Registry (Appointed Person), O/229/13, [28]. 83 Oska’s v Morgan (n 39), [43]–[45]. 84 ABX v Gurwitch (n 82), [28]–[29]. 85 Nature’s Gift International, Inc v Merck Consumer Healthcare Ltd, Trade Marks Registry (Opposition), O/383/15, [37]. This decision is also of interest because the tribunal looked not just at the fact of advertising, but also at the fact that the advertisements were broadcast during some of the UK’s most watched television programmes.

150 Distinctiveness of the Marks Thus, details of the senior user’s advertising budget in Burkina Faso were of no help in establishing the senior user’s reputation in Europe.86

7.4 Market Share There appear to be few examples where the tribunals have referred to a precise market share in establishing enhanced acquired distinctiveness, although in one case, a market share of 30% sufficed.87 However, the Tribunals have, on occasion, commented in more abstract terms on the senior user’s position in the market. For example, the fact that the respective senior users were market leaders,88 had a monopoly position in the market,89 and had a leading position in the market90 were all held to be helpful in showing sufficient acquired distinctive character.

7.5 Duration of Use Examples of length of use found sufficient to contribute to inherent acquired distinctiveness include:

• 5 years91 • 11 years92 • 14 years93 • 23 years.94

7.6 Where the Goods Have Been Sold Tribunals have often looked at the types of shops in which the senior goods have been sold, which presumably serves as a proxy for the consideration of how widespread the use of a mark. For example, if goods are stocked by a supermarket chain, this would suggest that they will be available (and so the mark will be used) nationally. Again, one would expect what is necessary to establish a reputation amongst consumers to depend on the type of goods concerned. 86 Case T-377/10 Preparados Alimenticios v OHMI EU:T:2013:600, [67]–[68]. 87 Enterprise v Europcar (n 58), [185]. The senior user was also said to be the market leader. Conversely, in Case T-184/16 NRJ Group v EUIPO EU:T:2017:703, [73], 1.9% of the market for the broadcasting of television programmes in France was (not surprisingly) insufficient to establish enhanced distinctiveness. 88 Decon Laboratories Ltd v Fred Baker Scientific Ltd [2000] EWHC 57 (Ch), [14]. 89 Deutsche Bahn v OHMI (n 76), [97]. 90 Case T-184/13 Skype v OHMI EU:T:2015:258, [44]. 91 Wistbray v Creative Nature (n 78), [2]‌and [19]. 92 Lewis v Client Connection (n 21), [26]. 93 Deutsche Bahn v OHMI (n 76), [97]. 94 Oska’s v Morgan (n 39), [43]–[45].

Marks with Acquired Distinctiveness 151 Examples of places of sale which contributed to a finding of enhanced acquired distinctiveness include: • Widespread sale of teas by supermarkets, other retailers, hotels, coffee and sandwich bars.95 • Senior user’s clothing stores were located in major UK shopping centres.96 Examples of places of sale which were not sufficient for a finding of enhanced acquired distinctiveness include: • Sale of non-medicated skin products in department stores such as Harrods and John Lewis. The basis of this is not made clear in the judgment, although part of the reason could be that Harrods only has a single branch and is avowedly not mass market.97

7.7 Third-party References Inclusion of the senior mark by third-parties in a range of materials has also been seen as evidence of acquired distinctiveness, presumably on the grounds that such references reflect the fact that consumers recognise the mark when used in a context outside of the immediate senior market. Examples include: • Inclusion in dictionaries.98 • Press cuttings commenting on which celebrities were wearing the senior user’s clothing.99 • Press coverage in national newspapers and specialist financial journals which, inter alia, detailed the senior user’s involvement in high profile acquisitions, such as that of Manchester United Football Club.100 • Statements of Chambers of Commerce, in judicial decisions and in press reports, all recognising that the mark was well known.101 • Findings in Patent Office decisions that the mark had a reputation.102 • Inclusion in the ‘Leading Brands of Spain’ forum.103

95 Wistbray v Creative Nature (n 78), [2]‌and [19]. 96 Oska’s v Morgan (n 39), [43]–[45]. 97 ABX v Gurwitch, (n 82), [28]. 98 Deutsche Bahn v OHMI (n 76), [97]. 99 Oska’s v Morgan (n 39), [43]–[45]. 100 Och-Ziff (n 57), [13]. 101 Case T-580/08 PJ Hungary v OHIM EU:T:2011:227, [88]. 102 Skype v OHMI (n 90), [44]. 103 Case T-38/13 Pedro Group v OHMI EU:T:2014:241, [81]–[82]. This was interesting because while the print- out from the forum post-dated the filing date of the junior mark, the information contained therein referred to the establishment of the brand for 1974 onwards, and was therefore admissible.

152 Distinctiveness of the Marks

7.8 Company Materials Materials generated by the senior user featuring the trade mark, such as catalogues may only be of limited assistance as they do not demonstrate the extent and nature of use, nor do they show the senior user’s market share, which is a measure of the extent to which consumers have accepted the mark.104

7.9 Foreign Use and Spillover Reputation Senior users have sometimes tried to establish a reputation by reference to use which takes place outside the area in which the senior mark is registered. Unlike in the case of passing off where there is a need to show goodwill and, at least customers in the UK,105 there is no problem in establishing the basic right where the use is abroad since the registration of the mark acts as the prima facie basis of the right.106 However, it will be necessary to show that the foreign use will have come to the attention of consumers in the UK, EU, or other EU Member State as appropriate. In the age of the internet, it is at least theoretically possible for consumers from any jurisdiction to become aware of and even purchase products from far and wide. However, tribunals have taken the approach that something more than the theoretical possibility of consumers coming in to contact with the goods or service is necessary to establish an enhanced reputation. Thus, the existence of an online service, accessible from the UK, but with a website only in German did not establish an enhanced reputation in the UK.107 Similarly, it could not be inferred from evidence of a reputation on the African continent that the senior user had a reputation in Europe without additional evidence. In particular, merely citing the existence of the internet did not suffice to establish a European reputation, nor did the fact that there were a significant number of African consumers living in the EU, since these consumers would have made up only a small percentage of the general European market in question.108 An example of a situation where foreign reputation was considered was in Och-Ziff,109 where the judge considered the global operations of the senior user’s hedge fund, and its position on the New York Stock Exchange. It should be noted though that the senior user also had a significant business presence in the UK and Europe more generally, which was referenced by the judge.

104 Preparados Alimenticios v OHMI (n 86), [68]. 105 Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2015] UKSC 31, [47]–[68]. 106 Although the mark may be invalidated if it has not been used in the EU/UK etc. within the relevant time period. 107 Deutsche Telekom AG v E! Entertainment Television Inc [2006] EWHC 33 (Ch), [24]. 108 Preparados Alimenticios v OHMI (n 86), [68] and [71]–[73]. 109 Och-Ziff (n 57), [11]–[15].

Trade Mark Sense and Fame 153

7.10 Examples of Marks with an Enhanced Reputation Examples include: • RITZ for hotels.110 • CASINO DE MONTE-CARLO for services, entertainment, providing casino facilities, gambling, etc.111 • PEPE for clothing.112 • MONEY SAVING EXPERT for financial advice.113 • ICE (a German rail service)—reputation in Germany.114 • MORGAN for clothing.115 • DRAGONFLY and device for teas.116 • ASSOS for clothing aimed at cyclists.117 • OCH for various financial services.118 • The Mr Wills logo (an anthropomorphised bird dressed like an English gentleman) for clothing.119 • SKY for ‘apparatus for recording, transmission or reproduction of sound and images’ in Class 9, ‘telecommunications’ in Class 38 and ‘entertainment’ in Class 41.120 • HUGGIES for nappies.121 Although these examples include at least some household names, it is clear that marks with a lower level of reputation have also qualified for enhanced acquired distinctiveness.

8. Distinctiveness in a Trade Mark Sense and Fame as a Concept Distinguished Senior users have sometimes been confused between the distinction between marks being known as trade marks, which counts for the purposes of enhanced acquired distinctiveness, and marks being known as dictionary words or cultural and historical 110 Ellerman Investments Ltd v C-Vanci [2006] EWHC 1442 (Ch). 111 Societe Anonyme des Bains de Mer et du Cercle des Etrangers a Monaco v Anglofile International Ltd (t/a Monte Carlo Casino Entertainment) [2013] EWPCC 38, [32]. 112 PJ Hungary v OHIM (n 101). 113 Lewis v Client Connection (n 21). 114 Deutsche Bahn v OHMI (n 76). 115 Oska’s v Morgan (n 39). 116 Wistbray v Creative Nature (n 78). 117 Maier v ASOS (n 77). 118 Och-Ziff (n 57). 119 Jack Wills (n 64). 120 Skype v OHMI (n 90), [45]. 121 Kimberly-Clark Worldwide Inc v Multibrands International Ltd, Trade Marks Registry (Appointed Person), O/363/17,  [70].

154 Distinctiveness of the Marks figures and the like, which does not count for the purposes of acquired distinctiveness, but may be relevant to inherent distinctiveness. The most famous example of this (to trade mark lawyers at least) is the mark PICASSO for vehicles. The estate of the late artist, Pablo Picasso, was the owner of the EUTM PICASSO for vehicles, which it used as the basis of an opposition against the registration of PICARO for the same goods. The Picasso Estate argued that the mark should benefit from enhanced protection because the mark was well known due to Picasso’s fame as an artist. However, the GC,122 upheld by the CJEU,123 found that this fame worked against the senior user. The fame of the painter meant that consumers would associate the term with him, which would ‘reduce the resonance’ of the mark with the registered goods: motor vehicles.124 Since the mark had a ‘clear and specific’ meaning that ‘can be grasped immediately by the relevant public’, any difference between the senior mark and junior marks would be easily recognised by the relevant public, making confusion less likely.125 There is a degree of irony here, because this argument, that marks which are better known will be better remembered and differentiated by consumers with imperfect recollection, is exactly that which has been raised by courts and commentators, but which has gained no traction in relation to general trade marks. The Picasso Estate also argued that the mark should benefit from the extra protection given to marks with high inherent distinctive character since the term PICASSO was in no way descriptive of vehicles. However, this argument too was rejected because the sheer force of the meaning of Picasso as the name of an artist would dominate consumer perception of the mark, meaning that the relationship between the mark and vehicles would be overridden.126 A similar approach is evident in relation to the mark ONLY GIVENCHY, where the GC held that as the term ONLY was a commonly used English word, it was of weak distinctive character without considering its relationship to the goods in question (in this case perfume) and could not benefit from the protection afforded to marks with enhanced distinctive character.127 Arguably, this is a questionable approach. Trade mark law has long treated arbitrary trade marks, where the mark consists of a dictionary or known term applied to unrelated goods, as highly distinctive. Consumers, on viewing such marks, know that they must be trade marks as they are clearly not placed on the goods to refer back to the original meaning, but rather to indicate the origin of the goods. Such an approach is apparent in the GC’s ALADDIN/ALADIN case,128 where the court found that the name of the lamp owner was inherently distinctive for metal polish and so could benefit from the extra protection given to marks with enhanced distinctiveness. ALADIN was not descriptive of the goods. Moreover, here the fame of the tale 122 Case T-185/02 Ruiz-Picasso v OHMI EU:T:2004:189. 123 Case C-361/04 P Ruiz-Picasso v OHIM (CJEU) EU:C:2006:25. 124 Ibid, [27]. 125 Ibid, [20]. 126 Ruiz-Picasso v OHMI (n 122), [57] and [61]. 127 Case T-586/10 Aktieselskabet af 21. november 2001 v OHMI EU:T:2011:722, [45]–[48]. 128 Case T-126/03 Reckitt Benckiser (Espana) SL v OHIM EU:T:2005:288, [92]–[95] (although this decision predates the CJEU’s Picasso judgment).

Distinctiveness of the Junior Mark and ‘Swamping’ Concerns 155 was actually used to strengthen the protection of the marks, as the court held that the fact that, in the story, the genie appeared when the lamp was rubbed evoked one method of using the polish, and so the name had a ‘great capacity’ to identify the goods as coming from a particular undertaking.

9. The Distinctiveness of the Junior Mark and ‘Swamping’ Concerns Although the consideration of distinctiveness generally focuses on the strength of the senior mark,129 exceptionally, the strength of the junior mark may work to rebut what would otherwise be confusion. For example, in Thomas Pink, the senior mark, PINK, was used for the sale of shirts by a national chain. The junior user was the multinational store, Victoria’s Secret, which used various iterations of the term PINK for lingerie and leisure clothing. It was found that there was a likelihood of confusion when PINK was emblazoned on the junior user’s clothing and when used by itself on shop fronts. However, when it was used on swing tags and garment labels,130 the presence of the well- known term VICTORIA’S SECRET on those labels, together with the fact that the goods were offered inside VICTORIA’S SECRET stores meant that there was no likelihood of confusion.131 Looking to the future, we might expect more such cases, given that the CJEU in Specsavers132 has called on courts to consider the wider context when judging confusion, rather than carrying out a comparison limited to the mark as registered versus a strictly defined view of the mark as used. Indeed, one might see Specsavers itself as giving the green light to adding the distinctiveness of the junior mark into the assessment of likelihood of confusion since the CJEU found that even though the junior user, ASDA, had used a similar shade of green to that used by the senior user, Specsavers, it was necessary to consider that consumers were already aware that ASDA had a considerable history of using a green colour and so this established reputation on the part of the junior user could reduce the likelihood of confusion.133 There is a careful balance to be struck here. While it is right that trade mark law should reflect business reality and consumer perception, the danger is that this will insulate ‘big’ defendants against what would otherwise be trade mark infringement more than their smaller counterparts and that, equally well, senior users will get less protection when their rival has greater business might. This approach may be contrasted with that taken in analysing the impact of the dominant elements of marks where part of one of the marks is a well-known company name discussed in Chapter 3 on composite

129

See, e.g., Skype v OHMI (n 90), [50]. Thomas Pink (n 41), [169]–[174]. Ibid, [175]–[177]. 132 Case C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd EU:C:2013:497. 133 Ibid, [46]. 130 131

156 Distinctiveness of the Marks marks. In that context, the CJEU in Medion134 warned against allowing a junior user to deprive the senior user of the benefit of its mark by merely adding its distinctive company name.

10. Timing of the Distinctiveness Analysis 10.1 When Must the Mark be Distinctive? For registration purposes, the distinctiveness of a mark is normally assessed at the point at which the application for registration is filed.135 However, the level of distinctiveness of a mark can evolve over time, moving either upwards or downwards. This may depend on factors such as whether other undertakings start using similar (though perhaps not infringing) marks and perhaps most commonly, whether use which follows registration leads to the mark building up significant acquired distinctiveness.136 Consequently, the CJEU has found that distinctiveness for the purposes of establishing the scope of protection should be judged at the time that the allegedly infringing trade mark began to be used.137 This is explained as striking a balance between not granting the senior user protection that is at odds with the reality of his trade mark, while at the same time preventing the junior user from relying on the impact of his own use to argue that the senior mark has become less distinctive.138 Establishing the relevant point as when the junior use begins also gives the junior user a clear and fixed point that is not too far into the past at which he can weight up for himself whether his use is likely to be confusing in order to avoid infringing. When the context is one of registrability, rather than infringement, the EUIPO Guidelines state that enhanced inherent distinctiveness should be assessed at the time of any decision as to whether a junior use is likely to cause confusion while enhanced acquired distinctiveness should exist both at the time of the filing of the junior EUTM application and at the time of the decision.139 Registrability must be treated differently from infringement because the junior mark will not necessarily be used prior to its registration, or the application to register it. The wisdom of having two relevant dates for establishing acquired distinctiveness is questionable though as this will necessitate two evidential enquiries focusing on time periods that (one would hope at least) are not that far apart.

134 Case C-120/04 Medion AG v Thomson multimedia Sales Germany & Austria GmbH EU:C:2005:594, [35]. 135 Although there are provisions for taking into account distinctiveness that has been acquired between the filing date and any invalidity action—see the TMD 2015, Art 4(4). 136 EUIPO Guidelines for Examination of European Union Trade Marks, Part C, section 2, ch. 5, p. 11. 137 Case C-145/05 Levi Strauss & Co v Casucci SpA EU:C:2006:264, [20]. For an example of this judgment in action see Stichting BDO v BDO Unibank (n 55). 138 Stichting BDO v BDO Unibank (n 55), [17]–[18]. 139 EUIPO Guidelines, Part C, section 2, ch.5, p. 6.

Timing of the Distinctiveness Analysis 157

10.2 Where does Distinctiveness Fit into the Likelihood of Confusion Analysis? A somewhat different temporal aspect of the role of distinctiveness is at which point in the confusion analysis it is considered. The CJEU in SABEL speaks about similarity of marks and distinctiveness in one breath140 and the reference from the German court in that case places special emphasis on distinctiveness compensating for a relatively low level of similarity of marks.141 However, contemporary practice is to consider distinctiveness after both similarity of marks and similarity of goods has been established, as part of the overall assessment of likelihood of confusion. This suggests that distinctiveness should first be established independently of the two forms of similarity, with the issue of whether more of one factor can compensate for less of another factor left until the baseline level of each factor has been established. The fact that distinctiveness is separate from, and arguably ancillary to, the basic analysis of similarity of goods and similarity of marks is also evident from the fact that there are a considerable number of cases where the GC has found that while there is no special level of distinctiveness, there is sufficient similarity of goods and marks for confusion to be established142 and vice versa143 and that distinctiveness has not been considered once it has been found that marks are not similar.144 On an allied note, it should also be observed that there is no per se rule that there can be no confusion where the senior mark has a low degree of distinctiveness unless the marks are identical.145

10.3 A Caveat: Distinctiveness in Practice The GC, in particular, has placed relatively little weight on the distinctiveness of marks factor. There are numerous examples, the most prominent of which being LES PAGES JAUNE146 and FLEXI AIR,147 where the court has concluded that even if the senior mark is only weakly distinctive, distinctiveness is only one element in the overall

140 See particularly, SABEL v Puma (n 1), [23]–[24]. 141 The referred question (reproduced in Canon (AGO) (n 12), [14]) asked whether the marks can be similar on the basis of the shared concept even though the mark is not particularly well known. A similar approach is apparent in relation to goods in the Bundespatentgericht reference in Canon detailed in Canon (AGO) (n 12), [31]. 142 E.g., Case T-395/12 Fetim v OHMI EU:T:2015:92, [45], upheld in Case C-190/15 P Fetim v OHIM EU:C:2015:778; Case T-383/12 Ferienhauser zem See v OHIM EU:T:2014:12, [76]; Case T-533/12 IBSolution v OHMI EU:T:2013:582, [57]; Case T-624/11 Yueqing Onesto Electric v OHIM EU:T:2013:137, [44]; Scandic v OHMI (n 68), [62]; Case T-273/10 Olive Line International v OHMI EU:T:2012:246, [79]; Tsakiris-Mallas v OHMI (n 54), [61]; Barilla v OHIM (n 47), [27]; Hipp v OHIM (n 67), [56]; Honda v OHMI (n 42), [30]; Case T-501/08 NEC Display Solutions Europe v OHMI EU:T:2011:527, [57]; Deutsche Bahn v OHMI (n 76), [42]; Case T-557/08 mPAY24 v OHIM EU:T:2010:287, [42]; Case T-407/08 MIP Metro v OHIM EU:T:2010:256, [45]. 143 Case T-437/11 Golden Balls Ltd v OHIM EU:T:2013:441, [59] (likelihood of confusion does not follow automatically from enhanced distinctive character). 144 Case T-244/09 Accenture Global Services v OHIM EU:T:2010:430, [27]. 145 E.g., Case C-42/12 P Hrbek v OHIM EU:C:2012:765, [62]; T.I.M.E. ART v OHIM (n 45), [41]; L’Oréal v OHIM (CJEU) (n 46), [45]. 146 Xentral v OHIM (n 46), [69]–[71]. 147 L’Oréal v OHIM (GC) (n 46), [61]. See also, Case T-7/04 Shaker v OHMI EU:T:2008:481, [56].

158 Distinctiveness of the Marks assessment of confusion and, given the level of similarity between the marks and/or goods, a finding of likelihood of confusion is in order. Indeed, the CJEU has counselled against placing undue importance on the fact that the senior mark has low distinctiveness.148 Similarly, in at least one UK case, ‘very substantial enhanced distinctiveness’ did not help overcome a prima facie lack of likely confusion.149 Perhaps this approach is to be expected from the way in which the GC generally structures its judgments. The court routinely considers similarity of marks first, and then goods and leaves overall distinctiveness of the senior (as opposed to distinctive and dominant components of the marks) to the end section where it balances the factors in making its overall likelihood of confusion assessment. By the time that the court has gone through the process of establishing that both the marks and the goods are highly similar, it may feel awkward for the court to nevertheless find in the final section that there is no confusion.150 It is also fair to say that distinctiveness seems to be treated as somewhat of a second- class factor. While an absence of similarity of goods or similarity of marks would put an automatic stop to proceedings because at least a minimum level of both is necessary for likelihood of confusion under Article 5(2) and its equivalents, the same does not seem to be true of distinctiveness. While there is always presumptively a minimum level of distinctiveness (otherwise the mark could not subsist on the register), the GC has repeatedly found that it is not necessary to establish the level of distinctiveness of the senior mark because the similarity of marks and of goods is so strong.151 It must be said though that the most common scenario is that absolutely no mention is made of the level of distinctiveness of the mark at all. In research conducted by one of the authors, inherent distinctiveness was not mentioned at all in 68% of the cases surveyed and acquired distinctiveness was not mentioned in 82%.152 This is in marked contrast to the situation in the USA, where Beebe has found that the strength of the mark was relied on in 90% of cases where likely confusion was found153 and that acquired distinctiveness also played a particularly influential role.154 These differences may be partially explained by the fact that Beebe was analysing infringement cases, where data concerning reputation may be more readily forthcoming than in registrability cases, which make up the body of the GC’s caseload155 and also because the structure of the tests in the two jurisdictions are different, with strength coming earlier in the US analysis than in Europe. However, these differences do not fully explain the fact that in Europe distinctiveness is so frequently rejected or ignored.

148 Fetim v OHMI (n 142), [45]. 149 Lifestyle Equities CV & Anor v Santa Monica Polo Club Ltd & Ors [2017] EWHC 3313 (Ch), [106]. 150 Although for one case where distinctiveness made a difference, in the sense that it essentially overrode the low level of similarity of marks see Pedro Group v OHMI (n 103), [90]. 151 Barilla v OHIM (n 47), [27]–[29]; Case T-237/11 Lidl Stiftung v OHIM EU:T:2013:11, [105]. 152 I. Fhima and C. Denvir, ‘An Empirical Analysis of the Likelihood of Confusion Factors in European Trade Mark Law’ (2015) 46(3) IIC 310, 330. 153 Beebe (n 22), p.1610. 154 Ibid, p.1636. 155 Indeed, at an impressionistic rather than empirical level, distinctiveness seems to occupy a more prominent position in the UK infringement cases studied.

Conclusion 159

11. Conclusion Distinctiveness is the enigma of likelihood of confusion. Too important to ignore, distinctiveness has a clear basis in the CJEU’s jurisprudence and in trade mark law across the Atlantic. Yet its role is routinely downplayed by those tribunals actually applying the likelihood of confusion test and is much criticised by those analysing the European trade mark system. Distinctiveness is also a rare example of a situation where the CJEU was prepared to accept uncritically a foundational concept that had its origins in a Member State’s pre-harmonisation trade mark jurisprudence. In both describing how distinctiveness can be shown, but also cautioning that making (or failing to make) that showing may have relatively little impact on the overall finding of confusion, this chapter has attempted to paint a realistic picture of how distinctiveness fits in to the likelihood of confusion test.

6 Assessing Likelihood of Confusion 1. Introduction 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.1 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’.2 A claim is therefore successful where the similarity or identity of the marks, the similarity or identity of the goods and services and other additional factors combine to establish the likelihood of confusion. While the similarity between two marks (or a mark and sign) and the similarity between goods or services are usually the most crucial factors,3 the purpose of this chapter is to identify these additional factors under the third limb of the test. The likelihood of confusion is conceived as ‘the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings’.4 This chapter sets out the general approach under EU trade mark law to assessing this risk of confusion, which is based on a global assessment (Section 2), while also identifying the different types of confusion that are recognised (Section 3). This global assessment is conducted from the perspective of the relevant public, also referred to as the hypothetical average consumer of the products in dispute (Section 4). Following this, the ‘likelihood’ standard is addressed, including the extent to which proof of actual confusion has limited relevance for a test designed to anticipate confusion (Section 5). Since likely confusion is viewed through the eyes of a hypothetical average consumer, the extent to which empirical 1 See TMD 2015, Recital 16 (ex TMD 1988, Recital 10; ex TMD 2008, Recital 11); Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport (AGO) EU:C:1997:221, [32] (AG Jacobs). 2 TMA 1994, ss 5(2), 10(2); ex TMD 1988, Arts 4(1)(b), 5(1)(b); ex TMD 2008, Arts 4(1)(b), 5(1)(b). 3 R. Burrell and K. Weatherall, ‘Towards a New Relationship Between Trade Mark Law and Psychology’ (2018) 71 Current Legal Problems 87, 95. (‘The similarity of marks/goods enquiries are generally treated as determinative of the likelihood of confusion: i.e. we assume there will be confusion if both the marks, and the goods or services, are objectively similar.’) 4 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc EU:C:1998:442, [29]–[30]. The Confusion Test in European Trade Mark Law. Ilanah Fhima and Dev S. Gangjee, Oxford University Press (2019). © Ilanah Fhima and Dev S. Gangjee 2019 DOI: 10.1093/oso/9780199674336.003.0006

A Global Assessment 161 evidence establishing actual confusion is either necessary or desirable is subsequently considered, with a particular focus on consumer surveys (Section 6). This in turn leads on to differences in the application of the test in a relative grounds scenario versus an infringement scenario, where context is relevant (Section 7). Finally, the chapter concludes by considering two additional aspects which tribunals have considered relevant: how the test should be applied if the senior mark belongs to a series or family of marks and the scope of protection for weakly distinctive marks (Section 8).

2. A Global Assessment In SABEL, the Court of Justice of the European Union (CJEU) identified the factors which are relevant when assessing whether there is a likelihood of confusion: [It] it is clear from the tenth recital in the preamble to the [TMD 1988] that the appreciation of the likelihood of confusion ‘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 between the goods or services identified’. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. . . That 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. . . In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion.5

Courts in the UK have reformulated this multi-factor test into a helpfully structured series of analytical steps, which was introduced in Chapter 1 and is reproduced below for convenience.6 (a) The likelihood of confusion must be appreciated globally, taking account of all relevant factors. (b) The matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question.

5 Case C-251/95 SABEL v Puma AG, Rudolf Dassler Sport (CJEU) EU:C:1997:528, [22]–[25]. 6 Maier v ASOS Plc [2015] EWCA Civ 220, [75]–[76], which builds on Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [51]–[52].

162 Assessing Likelihood of Confusion (c) The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. (d) The visual, aural, and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements. (e) Nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components. (f) And beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark. (g) A lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. (h) There is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it. (i) Mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient. (j) The reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense. (k) If the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion. [(l) As regards the meaning of likelihood of confusion, ‘it is the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings’.

Within this global appreciation, the more important stages of analysis have been covered in greater detail in previous chapters—assessing the similarity of marks, including composite marks (Chapters 2 and 3); assessing the similarity of goods or services (Chapter 4); and the role of distinctiveness (Chapter 5). In Canon, the CJEU established that the ‘global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa’.7 This flexibility, which allows difficulties in one area to be offset by strengths in another, is referred to as the interdependency principle. In other cases, however, the court has indicated that the core 7 Canon (n 4), [17]; see also Case C-235/05 P L’Oréal v OHIM EU:C:2006:271, [35].

A Global Assessment 163 requirements—similarity of marks, similarity of goods, and a likelihood of confusion— are cumulative.8 Each requirement has to be satisfied before proceeding to the next step. Consequently, there are circumstances in which a tribunal can legitimately reject a claim on the basis that the signs are so dissimilar that there could be no confusion even where the goods are identical and the senior mark is highly distinctive.9 These two seemingly conflicting requirements of interdependency, where some factors may compensate for others and cumulation, where certain factors must be established regardless of strengths elsewhere, can be reconciled since the interdependence of factors operates only after a certain threshold level of similarity has been achieved. In other words, cumulation must be satisfied before interdependency is engaged. In practice, registries and courts use a sliding scale when assessing similarity, resorting to categories such as (i) strong or high, (ii) medium or average, and (iii) weak or low.10 Finding the signs to be weakly similar satisfies the cumulation requirement and allows the analysis to proceed to the next stage of comparing goods or services. Only if both the signs and goods pass the threshold of similarity does interdependency apply. Finding either the signs or goods to be dissimilar brings the analysis to a halt, since a necessary limb of the test is not satisfied.11 Two additional aspects are worth highlighting. The first is that the global assessment is conducted via a multifactor test. It is also a very widely used test; besides courts, trade mark registries regularly apply it, which generates large numbers of decisions across the EU each year. This makes applications of the test fertile ground for empirical analysis. One of the objectives of the nascent body of research in this area is to determine which factors—if any—are dispositive such that they lead to a ‘stampeding’ of the other factors to align them with the more important ones.12 The second aspect is that the CJEU has held that the requirement of the availability of certain signs for use by competitors is not a relevant factor to be taken into account when assessing the likelihood of confusion.13 Adidas, the proprietor of a well-known three parallel stripes figurative mark used on sports goods and footwear, commenced proceedings against competitors who were using two parallel stripes on footwear and clothing products. The defendants claimed they were doing so decoratively. The CJEU held that the need to keep certain signs (including basic signs such as stripes) available was not one of the factors in play, since the confusion test was to be applied from the perspective of the relevant public for 8 Case C-106/03 Vedial v OHIM EU:C:2004:611, [51]; Case C- 234/ 06 P Il Ponte Finanzaria v OHIM EU:C:2007:514, [48]–[50]; Case C-558/12 P OHIM v riha WeserGold Getranke GmbH EU:C:2014:22, [41]–[45]. 9 Case C-254/09 P Calvin Klein Trademark Trust v OHIM, Zafra Marroquineros SL EU:C:2010:488, [53]; Case C-552/09 P Ferrero SpA v OHIM EU:C:2011:177, [65]–[66] (TiMi KINDERJOGHURT figurative mark not similar to KINDER, so that the issue of the reputation of KINDER was irrelevant). 10 I. Fhima and C. Denvir, ‘An Empirical Analysis of the Likelihood of Confusion Factors in European Trade Mark Law’ (2015) 46 IIC 310, 319. 11 See, e.g., Case T-328/12 Mundipharma GmbH v OHIM, AFT Pharmaceuticals Ltd EU:T:2013:537, [62]–[63] (The marks had conceptual differences leading to overall dissimilarity while the relevant public was especially attentive; identical goods and services could not counteract this to result in a likelihood of confusion). However, more questionably, the GC has held that where the goods and services are identical ‘the scope of any differences between the signs in question is reduced’: Case T-67/15 Polo Club v EUIPO, Lifestyle Equities EU:T:2016:657, [87]. 12 B. Beebe, ‘An Empirical Study of the Multifactor Tests for Trademark Infringement’ (2006) 94 California Law Review 1581; Fhima and Denvir (n 10). 13 Case C-102/07 Adidas AG v Marca Mode (CJEU) EU:C:2008:217.

164 Assessing Likelihood of Confusion the products in question. Signs which might otherwise need to be available for other traders should not be available for use in ways that might nevertheless lead to consumer confusion. Where the interests of traders in accessing such simple signs, with limited inherent distinctiveness, ran up against the interests of consumers who wished to avoid being confused, the latter would be prioritised. Traders remained free to use the stripe motif in other ways, which would not lead to a likelihood of confusion.14

3. Categories of Confusion There are many ways in which consumers might be confused about a product, including its ingredients, geographical origin, mode of production, qualities, or functions. However trade mark law is concerned with commercial origin confusion; more specifically, confusion that the goods or services produced by the junior user are those of the senior user, or produced under some form of commercial association with the senior user. It is helpful at this stage to revisit the types of confusion we introduced in Chapter 1, adding further detail. As the CJEU implicitly recognised in SABEL, confusion may arise ‘(1) where the public confuses the sign and the mark in question (likelihood of direct confusion); [and] (2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association)’.15 Direct or source confusion is more straightforward— there is a likelihood that the relevant public will think that producer B’s products are those of producer A. This might arise in situations where the signs are very similar and the products are identical. We have referred to this as the ‘classic’ diversion of trade in Chapter 1. Apart from direct confusion, courts have recognised indirect confusion, also referred to as sponsorship confusion or the likelihood of commercial association. It is expressly included in Articles 5(1)(b) and 10(2)(b) of the TMD 2015, which refer to ‘the likelihood of confusion includ[ing] the likelihood of association with the earlier trade mark’. The difference between mere association and commercial association is important. The CJEU has clarified that mere association, ‘where the public considers the [junior user’s] sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused’, is not covered by the likelihood of confusion.16 Thus it ‘follows from that wording [of the Trade Marks Directive] that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope’.17 A mere mental ‘association which the public might make between two trade marks as a result of their analogous semantic content 14 Ibid, [29]–[32]. 15 SABEL (n 5) [16]–[18]. 16 SABEL (n 5), [16]. For background, see C. Gielen, ‘The Relevance of Association for Trade Mark Conflicts’ in V. von Bomhard, J. Pagenberg, and D. Schennen (eds), Harmonisierung des Markenrechts: Festschrift für Alexander von Mühlendahl (Heymanns, 2005) 207; J. A. Tessensohn, ‘May You Live in Interesting Times –European Trademark Law in the Wake of Sabel BV v. Puma AG’ (1999) 6 Journal of Intellectual Property Law 217. 17 SABEL (n 5), [18].

Categories of Confusion 165 is not in itself a sufficient ground for concluding that there is a likelihood of confusion’.18 By contrast, commercial associations which might lead to consumer confusion were identified by the CJEU as relevant in case law preceding the Directive. In Ideal Standard, the court developed the notion of ‘economically linked’ undertakings, where one is subject to the control of another and which could give rise to such a commercial association in the minds of the relevant public: A number of situations are covered: products put into circulation by the same undertaking, by a licensee, by a parent company, by a subsidiary of the same group, or by an exclusive distributor. . . In all the cases mentioned, control [is] in the hands of a single body: the group of companies in the case of products put into circulation by a subsidiary; the manufacturer in the case of products marketed by the distributor; the licensor in the case of products marketed by a licensee. In the case of a licence, the licensor can control the quality of the licensee’s products by including in the contract clauses requiring the licensee to comply with his instructions and giving him the possibility of verifying such compliance. The origin that the trade mark is intended to guarantee is the same: it is not defined by reference to the manufacturer but by reference to the point of control of manufacture.19

An example will help to illustrate this category of confusion. The figurative mark LOW FESTIVAL was the basis for successfully opposing an application for FLOW FESTIVAL, where both were for services relating to music festivals in class 41. The EUIPO Board of Appeal concluded that ‘it cannot be disregarded that the relevant Spanish public might believe that the contested sign concerns a new line of services launched by the earlier mark’s undertaking. Therefore, there is a likelihood of confusion including a likelihood of association in Spain in relation to the contested services that are identical or similar’.20 Such a commercial association is also possible where the claimant asserts rights in a series or family of marks sharing a common element, where the junior user’s mark appears to belong to that family.21 Related to the concept of the likelihood of commercial association is the notion of ‘indirect’ confusion which has been developed by the UK Trade Mark Registry. In L.A. Sugar, Mr Purvis QC, sitting as Appointed Person explained that confusion can be either ‘direct’, in the sense the consumer mistakes the junior mark for the senior mark, or

18 Ibid, [26]. 19 Case C-9/93 IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH EU:C:1994:261, [34], [37]. 20 R 1565/2016-1, Flow Festival Oy v Producciones Baltimore, S.L., 2 Mar 2017 EUIPO BoA, [59], [62]. A questionably broad approach to confusing associations was adopted in a Swiss case where the Swiss Red Cross sought to cancel a registration for a ‘dismembered’ red cross, one of whose branches was separated from the rest, for medical services: ‘Red Cross’ (2015) IIC 142, 146 (Swiss Federal Supreme Court). (‘There is likewise an unlawful appropriation of a name (or sign) if the party that appropriates it creates the impression that the name (or sign) used has something to do with his own name (or sign) or his own enterprise, or that close links on the personal, ideological, intellectual or commercial level have been created between the parties, although this is not the case’.) 21 Case T-194/03 Il Ponte Finanziaria SpA v OHIM EU:T:2006:65, [124]; aff ’d Case C-234/06 P Il Ponte Finanziaria (n 8). See Section 8 of this chapter for details.

166 Assessing Likelihood of Confusion ‘indirect’, in the sense that the consumer is aware that the junior mark is different from that of the senior mark, but because of the similarity between the two sets of marks and goods, erroneously believes the junior mark to be a brand extension of the senior mark.22 The Appointed Person identifies certain situations23 when this would be particularly likely: • Where the junior mark reproduces a particularly distinctive element of the senior mark, for example, use of TESCO in the junior sign 26 RED TESCO. • Where the addition in the junior mark is very weakly distinctive, for example, LITE. • Where the junior mark is a logical variant of the senior mark (raising the possibility of a brand extension). • In addition to brand extensions, indirect confusion may also be found where there is a mistaken belief on the part of the average consumer that the junior goods are merchandise, licenced by the senior mark holder that is indirect confusion which leads to commercial association.24

The General Court (GC) has recognised a similar concept, in the form of ‘sub-brand’ confusion. However this form of confusion can only exist in certain market sectors, where there is an established practice for manufacturers to frequently put several lines of products on the market under different sub-brands.25 Such market sectors include clothing and cosmetics.26 Confusion generally occurs in a situation where, because of a similarity of marks and of goods and services, consumers mistake the junior mark for the claimants. However, both the relevant legislation and CJEU pronouncements refer to a likelihood of confusion without specifying its precise parameters. Thus, courts in the UK have confirmed that ‘wrong way round confusion’, where consumers mistake the senior user’s offering for that of the junior user, is actionable.27 Such cases tend to be the exception rather than the rule because factually, for such a mistake to be made, the junior mark will need a stronger reputation than that of the senior user. Paradigmatically, this occurs where the senior user is an established but relatively smaller undertaking which has been trading and has registered its trade marks in the UK, while the junior user has a substantial business overseas with spillover reputation in the UK, but is a new entrant 22 L.A. Sugar Ltd v Back Beat Inc, Trade Marks Registry (Appointed Person), O/375/10, [16]. 23 Ibid, [17]. The language of ‘direct’ and ‘indirect’ confusion can in fact be found in SABEL (n 5), [16]–[17], but without explanation as to what it means. The L.A. Sugar formulation was cited approvingly in Whyte and MacKay Ltd v Origin Wine UK Ltd & Anor [2015] EWHC 1271 (Ch), [42]. See also, Roederer v J Garcia Carrion S.A. & Ors [2015] EWHC 2760 (Ch), [65] (indirect confusion because CRISTALINO wine will be seen as an ‘offshoot’ of CRISTAL). 24 See, e,g,, Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch), [150]–[162]. 25 G. N. Hasselblatt (ed), European Union Trade Mark Regulation (2nd edn, Beck/Hart/Nomos, 2018) 404–405. 26 See respectively: Case T-693/15 Clover Canyon v EUIPO, Kaipa Sportswear EU:T:2016:620, [51] (clothing); Case T-109/07 L’Oréal SA v OHIM, Spa Monopole EU:T:2009:81, [32] (cosmetics). 27 See particularly the discussion in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41, [75]–[84].

The Perspective of the Average Consumer 167 to the UK market. For example, in Thomas Pink,28 the senior user, Thomas Pink had thirty-five shops selling upmarket men’s clothing in the UK. Likely confusion was found when the junior user, a subsidiary of the US-based Victoria’s Secret chain, sought to open a chain of ladies’ clothing shops named PINK. Similarly, it was found that the broadcast in the UK of the musical comedy series GLEE would be confused with the business of the senior mark-holder, a pre-existing comedy club with four branches in UK, named THE GLEE CLUB. Consumers would believe that the senior comedy clubs (which marketed themselves as independent) were spin-offs, or somehow related to the very prominent television series.29 Two additional categories of confusion are often presented as relating to the timing of confusion, since they extend beyond confusion at the time and place of sale. Initial interest confusion refers to a doctrine ‘which allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase’.30 Post-sale confusion has been described as ‘confusion on the part of. . . the public as to the trade origin of goods or services in relation to which the impugned sign has been used which only arises after the goods or services have been purchased’.31 Both categories are considered in detail in Chapter 7. We argue that as opposed to a matter of timing (when is a consumer confused?), it is more helpful to approach these categories as raising the question of materiality (no matter when the confusion occurs, will it result in meaningful economic harm?). Without a materiality requirement the recognition of speculative, fleeting, or immaterial confusion runs the risk of unreasonably impeding competitors.

4. The Perspective of the Average Consumer Having set out the factors to be considered under the global appreciation approach and the recognised categories of confusion, we now turn to the hypothetical vantage point from which to assess this: the perspective of the relevant public or average consumer. This is the perspective of ‘a notional person whose presumed expectations are to be taken into account by the national court in assessing the particular question it is called upon to decide’.32

28 Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch), [159]. 29 Comic Enterprises (n 27), [85]–[106]. For criticism of this category of confusion, see J. Marshall, ‘Wrong-Way- Round and Initial “Disinterest” Confusion’ (2018) 40(8) European Intellectual Property Review 510 (arguing that the harm to functions recognised under this form of confusion are better recognised under the double identity or dilution claims, which have different threshold criteria). 30 INTA, Report of the Online Use Subcommittee Concerning the Proposed Resolution on Initial Interest Confusion (18 Sep 2006) 1. 31 Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [277] (emphasis in the original). 32 Interflora Inc & Anor v Marks and Spencer plc [2014] EWCA Civ 1403, [128] (Kitchin LJ).

168 Assessing Likelihood of Confusion

4.1 Relevant Public or Average Consumer? The first point to note is that the ‘relevant public’ and the ‘average consumer’ are used interchangeably; both refer to the same hypothetical legal person, whose shoes the tribunal must step into.33 The average consumer is said to be representative of the relevant public.34 The legislative text refers to ‘a likelihood of confusion on the part of the public’.35 This collective reference to the public implies that there may be varied responses in the real world; a sizeable percentage of consumers may in fact not be confused by the junior users mark or sign. At present, it is clear that where ‘a significant part of the relevant public for the goods or services at issue may be confused as to the origin of the goods, this will be sufficient to establish a likelihood of confusion’.36 In the UK, judges tend to ask whether ‘a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court’ (emphasis added).37 While the threshold for this significant proportion remains unspecified, the test is not satisfied if only a minority of particularly inattentive consumers might be confused.38 It is worth pausing to consider how a ‘hypothetical average consumer’s response’—which can be considered a proxy for a reasonable person’s reaction to two marks or signs—can be reconciled with a ‘significant or substantial proportion of the relevant public’ standard, which seemingly focuses on whether enough real world consumers are likely to be confused. As the likelihood of confusion test seems to eschew an empirical measurement of confusion (see Section 6 of this chapter) the purpose of this ‘significant proportion’ requirement may need to be reassessed. Does it merely remind us that reactions within the class of consumers can be varied in the real world, such that confusion amongst a sub-set will be sufficient? Or does it signal a level of risk of confusion that must be instantiated, such that it must be above a certain de minimis threshold? Despite this uncertainty, the ‘significant proportion’ threshold remains relevant for the confusion test and a question has arisen as to whether it can be inverted. In other words, where a significant part of the public may not be confused, can a likelihood of confusion claim be rejected? Precisely this issue has been referred to the CJEU where the internationally renowned footballer Lionel Messi sought to register a figurative mark incorporating MESSI for sports equipment and clothing. It was opposed— initially successfully before the EUIPO—on the basis of a prior word mark MASSI on, inter alia, clothing, shoes, bicycle helmets, protective clothing, and gloves. The GC

33 EUIPO Guidelines for the Examination of European Union Trade Marks, Part C-Opposition, Section 2— Double Identity and Likelihood of Confusion, Chapter 3—Relevant Public and Degree of Attention, §2 (1 Oct 2017) (Defining the Relevant Public). 34 Enterprise Holdings, Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch), [137] (Arnold J). 35 For, e.g., TMA 1994, s 10(2); TMD 2015, Art 10(2)(b). 36 EUIPO Guidelines (n 33). 37 Comic Enterprises (n 27), [34] (Kitchin LJ). 38 Reed Executive v Reed Business Information [2004] EWCA Civ 159, [82] (Jacob LJ) (To ‘confuse only the careless or stupid is not enough’).

The Perspective of the Average Consumer 169 reversed, on the basis that a significant part of the relevant public will associate the term MESSI with the name of the famous football player and therefore perceive the term MASSI as being conceptually different. The fame associated with Messi would—for a significant part of the relevant public—lead to conceptual dissimilarity to such an extent that it would neutralize visual and phonetic similarities between the two marks.39 Consequently, a significant part of the relevant public would not be confused. The case has been appealed on the following basis: • The GC has erred in law in examining the conceptual similarity between the signs, since it takes into account only the perception of a significant part of the relevant public and fails to establish the relevance of the remainder of the relevant public, for whom the conceptual difference between the marks fails to counteract their visual or phonetic similarity. • Accordingly, the GC has erred in law by discounting the existence of a likelihood of confusion on the basis of the conceptual perception that a ‘significant part’ of the public has of the marks at issue, rather than assessing whether such a likelihood of confusion exists in a non-negligible part of the relevant public, as required by case-law.40 In clarifying that the focus of the test is on those who are confused, as opposed to those who are not,41 it is hoped that the CJEU will provide guidance as to whether a ‘substantial part’ of the relevant public is the same as a ‘non-negligible part’ and how this might be assessed. Since confusing even a part of the public is actionable, the second point to note is that courts in the UK have concluded that there is no ‘single meaning’ rule: ‘that the use of a sign in context is deemed to convey a single meaning in law even if it is in fact understood by different people in different ways’.42 In Marks and Spencer, it was argued by the defendant, the eponymous retailer accused of trade mark infringement for its sponsored keyword advertisement, that (i) since a court was tasked with assessing marks from the perspective of the hypothetical average consumer, this hypothetical construct would generate a binary (yes/no) answer to the question of confusion; ‘the average consumer, a hypothetical person, is either liable to be misled or he is not’;43 (ii) the argument was deployed since the evidence could be interpreted to favour the defendant; many consumers who encountered Marks and Spencer’s sponsored keyword advertisement for flower delivery services on the

39 Case T-554/14 Lionel Andrés Messi Cuccittini v EUIPO, JM. EV-e hijos, SRL EU:T:2018:230, [72]–[76]. 40 On appeal as Case C-449/18 P [2018] OJ C 392/3 (29 Oct 2018). 41 Conversely, it has been argued that the interests of those consumers who are not confused and would benefit from the junior user’s use ought to be taken into account: M. Grynberg, ‘Trademark Litigation as Consumer Conflict’ (2008) 83 New York University Law Review 60. 42 Interflora Inc v Marks and Spencer plc [2013] EWHC 1291 (Ch), [212] (Arnold J). For an overview, see D. Keeling, D. Llewelyn, J. Mellor QC, T. Moody-Stuart, I. Berkeley, A. Chantrielle, and W. Duncan, Kerly’s Law of Trade Marks and Trade Names (16th edn, Sweet & Maxwell, 2017), [3-037]–[3-045]. 43 As subsequently summarised in Interflora v Marks and Spencer (2014) (n 32), [108] (Kitchin LJ).

170 Assessing Likelihood of Confusion Google search results page were unlikely to confuse it with the claimant Interflora; and (iii) the defendant was essentially arguing that the singular (albeit hypothetical) average consumer would have a single meaning in mind when confronted with the defendant’s unauthorised use (‘Marks and Spencer is unrelated to Interflora’) and this single meaning should reflect what the majority of real-world consumers would think. This was a strategy designed to eliminate from consideration the views of a significant minority of consumers who might believe that Marks and Spencer may have a commercial association with Interflora, having joined its network of flower delivery providers. Arnold J dismissed this ‘single meaning’ suggestion, inter alia on that basis that EU trade mark law recognises acquired distinctiveness on the part of a significant proportion of consumers without requiring distinctiveness to be established for all consumers and that should have follow-on implications for infringement; it would be damaging to the interests of trade mark owners and the public interest more generally if even a significant proportion of consumers were confused; and CJEU authorities indicated that the views of a significant minority should be taken into account.44 This conclusion—that there is no hypothetical ‘single meaning’ aligned with the majority view of actual consumers—has been endorsed in other decisions as well.45 However the issue underlying the ‘single meaning’ debate remains unresolved. It is not entirely clear how the relevant public—containing within it the possibility of varied and differentiated responses to signs—can be reconciled with a single hypothetical average consumer vantage point. The third observation is that the relevant public consists of consumers of the goods in dispute. If the goods are relatively specialised or highly technical, this results in a specialist relevant public. With a view to analytical clarity, the relevant public is therefore distinct from the ‘general public’, which is used ‘where the goods or services with which the registration application is concerned are intended for all consumers’.46 Where products such as clothing or fast-moving consumer goods are concerned, the relevant public is usually the general public. By contrast, in other cases, the relevant public might consist entirely of professionals or specialists, or even a combination of specialists and the general public. The analysis also extends beyond actual purchasers to potential customers; those who may purchase the products in the future are included within the relevant public.47 The construction of the relevant public is therefore dependent on the goods or services in question. Since the specification of goods or services forms the basis, ‘in order to determine the relevant public, it is necessary to take into account all of the [goods or] services in respect

44 Interflora v Marks and Spencer (2013) (n 42), [212]–[224]; aff ’d on appeal Interflora v Marks and Spencer (2014) (n 32), [107]–[130] (Kitchin LJ). 45 Hasbro Inc v 123 Nahrmittel [2011] EWHC 199 (Ch), [169]–[170] (Floyd J); Soulcycle Inc v Matalan Ltd [2017] EWHC 496 (Ch) (Mann J) (Holding that there was no such ‘single meaning’ requirement for invalidation challenges). 46 Case C-412/05 P Alcon Inc v OHIM EU:C:2007:252, [62]. 47 EUIPO Guidelines (n 33).

The Perspective of the Average Consumer 171 of which registration of the mark is sought, regardless of the actual use of that mark’.48 For instance, once a mark is successfully registered for a broad range of insurance services, unless the specification is narrowed down through invalidation proceedings ‘that trade mark is protected for all insurance and reinsurance services, whatever the nature of the object insured, and regardless of the actual use of that trade mark, which may indeed be limited to car and travel insurance services. . . Thus, depending on the object insured, the services covered by the earlier trade mark may be intended for the general public or for more specialised consumers’.49 The court must look beyond the actual products sold by the trade mark proprietor and ‘consider a notional and fair use of that mark in relation to all of the goods or services in respect of which it is registered’.50 However where the description of goods or services is itself ambiguous or unclear, it is necessary for the court to construe the words used. If the specifications lack sufficient clarity and precision, they may run the risk of being invalidated.51 A related consequence is that where the trade mark owner is claiming enhanced distinctiveness (or mark strength) in order to bolster infringement, that claim needs to be demonstrated in relation to the goods the mark has actually been used upon and the corresponding class of consumers. Where the mark is registered for both footwear and clothing but only used in relation to the latter, the relevant average consumer will be a consumer of clothing.52 The fourth implication arising from the relevant public being derived from the products in dispute is that the court will need to consider ‘overlapping’ consumers— those consumers likely to use both the products covered by the prior mark and those produced by the junior user or defendant. As long as there is some overlap between the parties’ respective customers, this is sufficient. On several occasions, the GC has held that ‘for the purposes of defining the relevant public, it is necessary to take account of consumers likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for’.53 Thus where the senior mark refers to a broad category of goods (polish for metals) which addresses both everyday consumers as well as specialists, while the junior mark is restricted to a narrower sub- category (polish in the metal working industry), it is only specialist or professional consumers who will overlap and form the relevant base for assessment purposes.54

48 Case T-399/15 Morgan & Morgan Srl International Insurance Brokers v EUIPO, Grupo Morgan EU:T:2018:192, [29]. 49 Case T-247/12 Argo Group International Holdings v OHIM, Arisa Assurances (ARIS) EU:T:2014:258, [26]. 50 Maier v Asos (n 6), [78]. 51 The precise conditions under which this may occur are presently unclear and a reference to the CJEU is pending at the time of writing: Sky Plc v Skykick UK Ltd [2018] EWHC 155 (Ch) and Case C-371/18 [2018] OJ C 276 (6 Aug 2018). 52 Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), [61]; see also Assos of Switzerland SA v Asos Plc [2013] EWHC 2831 (Ch), [88]–[92]. 53 Case T-328/05 Apple Computer v OHIM, TKS-Teknosoft EU:T:2008:238, [23]; Case T-202/16 UAB Keturi kambariai v EUIPO EU:T:2017:750, [87]. The CJEU has seemingly endorsed this formulation: Case C-670/13 P The Cartoon Network Inc v OHIM, Boomerang TV SA EU:C:2014:2024, [28]. 54 Case T-126/03 Reckitt Benckiser (España), SL v EUIPO EU:T:2005:288, [81].

172 Assessing Likelihood of Confusion

4.2 Constructing the Average Consumer It is by now well-established that the hypothetical average consumer is far from being a fool but is certainly fallible. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. . . However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question.55

An emerging body of scholarship investigates the extent to which the legal construction of this seemingly sensible yet imperfect hypothetical consumer ought to be informed by empirical findings and developments in fields such as psychology as well as behavioural economics.56 As regards this hypothetical vantage point, the English Court of Appeal has conveniently summarised the case law to provide an overview of the relevant principles.57 • The average consumer is a hypothetical person or, as he has been called, a legal construct; he is a person who has been created to strike the right balance between the various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply. • The average consumer is not a statistical test; the national court must exercise its own judgment in accordance with the principle of proportionality and the principles explained by the Court of Justice to determine the perceptions of the average consumer in any given case in the light of all the circumstances; the test provides the court with a perspective from which to assess the particular question it has to decide.

55 Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV EU:C:1999:323, [26]; citing to Case C-210/96 Gut Springenheide GmbH and Tusky v Oberkreisdirektor des Kreises Steinfurt EU:C:1998:369, [31] (first outlining this average consumer as well informed and observant in the context of unfair competition law regulating misleading labelling). 56 See, e.g., J. Jacoby, ‘The Psychological Foundations of Trade Mark Law: Secondary Meaning, Genericism, Fame, Confusion and Dilution’ (2001) 91 The Trademark Reporter 1013; T. Lee, E. DeRosia, and G. Christensen, ‘Sophistication, Bridging the Gap and the Likelihood of Confusion: An Empirical and Theoretical Analysis’ (2008) 98 The Trademark Reporter 913; K. Weatherall, ‘The Consumer as the Empirical Measure of Trade Mark Law’ (2017) 80 Modern Law Review 57; Burrell and Weatherall (n 3). 57 Comic Enterprises (n 27), [31]–[34] (Kitchin LJ). The judge drew on earlier summaries in Specsavers International EWCA (n 6), [51]–[52] and Interflora v Marks and Spencer (2014) (n 32), [107]–[130]. These decisions in turn drew on synopses adopted by the UK Trade Mark Registry.

The Perspective of the Average Consumer 173 • In a case involving ordinary goods and services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world. A judge may nevertheless decide that it is necessary to have recourse to an expert’s opinion or a survey for the purpose of assisting the court to come to a conclusion as to whether there is a likelihood of [confusion]. • The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. • In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context. • The issue of a trade mark’s distinctiveness is intimately tied to the scope of the protection to which it is entitled. . . there will be a greater likelihood of confusion where the trade mark has a highly distinctive character either per se or as a result of the use which has been made of it. It follows that the court must necessarily have regard to the impact of the accused sign on the proportion of consumers to whom the trade mark is particularly distinctive. Certain aspects of this summary require further elaboration. First, there is the nature of the consumer as a ‘hypothetical legal construct’ or ‘normative benchmark’.58 This legal subject ‘has been created to strike the right balance between various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market and also to provide a standard, defined in EU law, which national courts may then apply’.59 The editors of Kerly identify three key functions for this hypothetical average consumer model: (i) to provide a balance between competing interests, allowing for trade-offs between protecting consumers and proprietary interests in marks while permitting free trade; (ii) to provide an autonomous and uniform approach applicable across the EU; and finally (iii) to develop an objective approach, which does not necessarily require costly consumer surveys—the judge can adopt the vantage point of this notional consumer in

58 Jack Wills (n 52), [63] (Arnold J). For further analysis, see J. Davis, ‘Locating the Average Consumer: His Judicial Origins, Intellectual Influences and Current Role in European Trade Mark Law’ [2005] Intellectual Property Quarterly 183, 198 (Arguing that this notion was introduced to counter the more empirical or survey- driven approach adopted in German law); J. Davis, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark Law’ [2015] Intellectual Property Quarterly 15; G. B. Dinwoodie and D. S. Gangjee, ‘The Image of the Consumer in European Trade Mark Law’ in D. Leczykiewicz and S. Weatherill (eds), The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (Hart, 2016) 339. 59 Interflora v Marks and Spencer (2014) (n 32), [113] (Kitchin LJ).

174 Assessing Likelihood of Confusion order to decide the case—whilst simultaneously leaving the door open for surveys or other forms of empirical evidence where relevant.60 Second, ‘average’ also signals that we are relying on someone who is averagely perceptive, in terms of the degree of astuteness which is to be attributed. The averagely perceptive consumer is neither extremely credulous nor especially careful. As one judge put it: ‘the test requires the court to identify the relevant perception of consumers within any relevant class who are neither deficient in the requisite characteristics of being well informed, observant and circumspect, nor top performers in the demonstration of those characteristics. That is in substance what “average” means’.61 Courts in the UK have acknowledged that the average consumer or relevant public may therefore respond differently from members of the actual or ‘real world’ class of consumers for the products in question. As Arnold J has observed, ‘the [actual] persons represented by the average consumer may vary widely in age and socio-economic class’.62 Therefore ‘the average consumer provides a normative benchmark with regard to the standard of perspicacity to be applied, but this does not require the court to assume that all the persons of whom the average consumer is representative perceive either the trade mark or the allegedly infringing sign in the same way’.63 In Thomas Pink, Birss J concluded that the ‘average consumer [for clothing products] represents a spectrum of consumers who are from different backgrounds and shop in different ways’, which included tourists, locals, shoppers seeking products for personal use or as a gift.64 A court must therefore ask itself: what is the most reasonably likely reaction when a consumer encounters these two conflicting marks in the context of their respective products? The editors of Kerly present this in terms of a range of likely responses: ‘Picture the bell curve of a normal distribution, reflecting the full range of views of consumers of a particular product or service—the average consumer test eliminates the outliers at either end of the traditional bell-shaped curve and directs attention to the views of typical consumers in the middle of the normal distribution’.65 This normatively infused approach closes off one reading of ‘average’, which might otherwise suggest itself: mathematical connotations of average which are determined by empirically informed statistical analysis (that is, the behaviour of a mean, median, or mode consumer).66 The ‘average consumer test is not a statistical test in the sense that, if the issue is likelihood of confusion, the court is not trying to decide whether a statistical majority of the relevant class of persons is likely to be confused’.67 These judicial formulations echo the legislative sentiments expressed in the Unfair Commercial Practices 60 Kerly (n 42), [3-007]–[3-009]. 61 Schütz (UK) Ltd v Delta Containers Ltd [2011] EWHC 1712 (Ch), [98] (Briggs J). 62 Jack Wills (n 52), [65]. 63 Ibid, [63]. 64 Thomas Pink (n 28), [118]. 65 Kerly (n 42), [3-007]. See also Thomas Pink (n 28), [117] (Birss J) (The ‘average consumer is not a single person but represents a distribution of consumers’). 66 Schütz v Delta (n 61), [98] (Briggs J) (‘The search for a statistical average is neither warranted by European jurisprudence, nor sensible in the present context’); Hearst Holding (n 24), [60] (Birss J) (The ‘word . . . “average” denotes that the person is typical. The term “average” does not denote some form of numerical mean, mode or median’). 67 Interflora v Marks and Spencer (2013) (n 42), [211] (Arnold J).

The Perspective of the Average Consumer 175 Directive (UCPD), which itself reflects CJEU interpretations of prior consumer legislation.68 Recital 18 of the UCPD describes the average consumer as ‘a notional, typical consumer’, and a ‘benchmark’, while emphasising that the ‘average consumer test is not a statistical test. National courts and authorities will have to exercise their own faculty of judgement, having regard to the case-law of the CJEU, to determine the typical reaction of the average consumer in a given case’. Another reading of ‘average’ which has been rejected relates to the averaging out of likely responses where there are separate classes or categories of consumers for the same product—for example balancing professionals who have greater familiarity with the product with end-users less familiar with it. In Schütz v Delta, the products at issue were rigid composite intermediate bulk containers (IBCs) used for the transportation and storage of liquids up to 1,000 litres.69 These containers, consisting of plastic bottles within metal cages and mounted on pallets, could be re-filled and re-used. The plastic bottles and surrounding metal cages had different lifespans, which gave rise to the practice of ‘cross bottling’ where a bottle by one manufacturer was placed in the cage of another. Schütz complained that this practice infringed its trade marks, since Delta’s own marks on the external metal frame were more prominent than Schütz’s mark on the bottles, suggesting that Delta had made the whole assembly. Those industrial operators who filled or refilled the bottles were less likely to be confused than the end-users of the contents of the bottles. Briggs J was asked to consider whether the perceptions of these two classes should be averaged out, such that the higher degree of attentiveness of one might offset the other. Rejecting this, he concluded that ‘the application of the average consumer test to the question whether Delta used Schütz’ trade marks in relation to the bottles of the IBCs as a whole does not depend upon a vain attempt to find a notional average consumer with perceptions somewhere between those of the fillers on the one hand and the end-users on the other’.70 This reasoning was subsequently endorsed by the UK Court of Appeal in London Taxi, where the perception of those who hired taxis was considered to be relevant alongside those who purchased them, as opposed to averaging out likely responses.71 Likelihood of confusion is therefore satisfied if an average consumer within any relevant class—for example, either professionals or the general consuming public—may be confused.

4.3 Categories or Classes of Consumers While the levels of attentiveness of the different classes cannot be ‘averaged out’, it is worth elaborating on the broader point underlying this conclusion; for the same 68 Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market [2005] OJ L149/22. 69 Schütz v Delta (n 61). 70 Ibid, [98]. 71 The London Taxi Corporation v Frazer Nash Research Ltd [2017] EWCA Civ 1729, [30]–[31] (Floyd LJ) (‘I agree with Briggs J that the notion of an average consumer requires the court to consider any relevant class of consumer, and not to average them.’).

176 Assessing Likelihood of Confusion product, there can be different classes or categories of consumers to consider. In Hearst the claimants argued that they were the only legitimate source for merchandise relating to the cartoon character Betty Boop in the UK.72 They had obtained registrations for EUTMs and UKTMs relating to word and figurative marks, which formed the basis for infringement claims against the defendants’ use of Betty Boop inter alia on reconditioned film posters. Birss J first identified three classes of persons—licensees or putative licensees for the merchandise, retailers, and end-consumers (in this case, the general public) —and proceeded to adopt the viewpoint of an average consumer for each class before determining that there had been infringement from the perspective of retailers and end-consumers.73 There is by now a considerable volume of case law which assesses the likelihood of confusion from the perspective of different classes of consumers.74 This leads on to the most practically relevant aspect: the global assessment of the likelihood of confusion must be carried out having regard to the class of consumer that has the lowest level of attention.75 As the EUIPO summarises it: ‘If the goods or services of both marks target both the general public and specialists, the likelihood of confusion will be assessed against the perception of the part of the public displaying the lower degree of attentiveness as it will be more prone to being confused. If this part of the public is not likely to be confused, it is even more unlikely that the part of the public with a higher degree of attention will be’.76 Finally, courts have confirmed that the perception of end-users of products, who may not have purchased the goods themselves, is also relevant. Those who use a product may still mistakenly think that a trade mark proprietor is responsible for its quality when they are actually using the junior user’s product, which could in turn have detrimental economic effects for the proprietor. In Schütz v Delta, in response to the risk created by the defendant’s cross bottling (described previously in this section) Briggs J put it thus: The end-user is. . . a person to whom the trade mark, as a badge of origin or authenticity of the IBC [intermediate bulk container] as a product, may well have significance. For as long as an IBC performs its functions effectively, that role of the trade marks may be of little consequence to the end-user. But if the IBC were to fail, then it is to the proprietor of the trade mark displayed on it that the end-user is likely to attribute blame for the failure, even if the end-user has no legal recourse against the manufacturer, and

72 Hearst Holdings (n 24). 73 Ibid, [72]–[76], [156]–[162]. 74 A prominent authority is Case C-412/05 P, Alcon Inc v OHIM (n 46) (TRIVASTAN/TRAVATAN). (Even in the context of prescription medication, in addition to healthcare professionals (doctors and pharmacists) the perceptions of end-users remained relevant). For recent examples see: Case T-351/14 Construlink -Tecnologias de Informação, SA v EUIPO, Wit-Software EU:T:2017:101 (The computer consultancy services concerned were directed at both the general public and professionals specialising in computing); Case T-722/16 Mapei SpA v EUIPO, Steenfabrieken Vandersanden NV EU:T:2017:808 (building materials were directed at the general public and industry professionals). 75 Case T-220/09 Ergo Versicherungsgruppe v OHIM, Société de développement et de recherche industrielle EU:T:2011:392, [21]. 76 EUIPO Guidelines (n 33), [2]‌.

The Perspective of the Average Consumer 177 has to pursue a complaint through its (filler) supplier. In my judgment end-users of IBCs are consumers in the relevant sense, for that reason.77

End-users are frequently deemed to have a lower degree of attention when compared to those further up the supply chain. Including them within the framework of analysis inevitably favours those asserting trade mark rights. Therefore the question of whether end-users are consuming the same product and ought to be considered, or receive a different service instead, has considerable significance. In London Taxi, the High Court and Court of Appeal diverged on the issue of whether the average consumer for taxis should extend beyond those who purchased taxis to drive them to encompass members of the public who hire taxis for journeys. Arnold J concluded that members of the public were consumers of taxi services, not taxis. They ‘are not end users of the goods, they are users of the service provided by the consumer of the goods’.78 If they had been included in the analysis, this would have increased the risk of confusion. While ‘taxis are expensive and specialised vehicles. . . taxi services are inexpensive and since consumers are often in a hurry, the level of attention paid by consumers of taxi services is fairly low’.79 However on appeal Floyd LJ took the view that ‘the term average consumer includes any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods. . . The guarantee of origin which the mark provides is directed not only at purchasers of taxis but also at members of the public, such as hirers of taxis. The hirer is a person to whom the origin function of the vehicle trade mark might matter at the stage when he or she hires the taxi... if, for example, the taxi were to fail for reasons not associated with the taxi service, it would be on the manufacturer identified by his trade mark that the hirer would, or might, wish to place the blame’.80

4.4 Attributes: Linguistic Capabilities and Degrees of Attentiveness The CJEU has established that findings which relate to the attributes of the relevant public, including the consumers’ degree of attention, are to be considered appraisals of fact.81 This restricts the ability to appeal on the basis that a lower tribunal has incorrectly assessed any such attribute. While EU law focuses on attentiveness, it is worth comparatively noting that US law refers to consumer sophistication, which correlates positively with the product’s price, length and complexity of the purchase transaction, infrequency of purchase, education levels, income, and the degree of background knowledge about a product that relevant consumers (such as professionals or hobbyists) may

77 Schütz v Delta (n 61), [99]. 78 The London Taxi Corporation v Frazer Nash Research Ltd [2016] EWHC 52 (Ch), [161]. 79 Ibid, [163]. 80 London Taxi EWCA (n 71), [34]–[35]. 81 Joined Cases C-581/13 P and C-582/13 P Intra-Presse v OHIM, Golden Balls Ltd EU:C:2014:2387, [62]; Case C-726/17 P Tetra Pharm (1997) Ltd v EUIPO, Sebapharma GmbH EU:C:2018:561, [5]‌, [6].

178 Assessing Likelihood of Confusion possess.82 Alongside levels of attention, the linguistic capacity of the relevant public is also a factual finding.83 This is particularly pertinent for litigation involving EUTMs. In Enterprise Holdings, in an infringement context, Arnold J held that ‘in assessing matters from the perspective of the average consumer, the court must have regard to the social, linguistic, cultural and economic conditions in the Member State concerned, which may very well vary as between Member States’.84 Therefore when assessing the likelihood of confusion for EUTMs, the aural or phonetic similarity for word elements, as well as comprehension or conceptual similarity, will depend on the linguistic baseline selected. The CJEU has recognised that certain European languages are commonly understood even in countries where they are not the official language. According to the GC, while ‘it may be assumed that a sign will be understood if the sign is applied for in respect of a territory in which the language of the sign is the native language of the population of the territory [by contrast] this has to be proved in respect of territories in which the relevant language is not the native language of the population, unless a sufficient knowledge of the language of the sign on the part of the target public in those territories is a well-known fact’.85 It has been established that the general public in the Scandinavian countries, the Netherlands, and Finland can be assumed to have a basic knowledge of English and will therefore understand the meanings of certain words, which will in turn reinforce conceptual similarity for English words.86 An opposition or infringement claim may therefore require an assessment of the linguistic abilities of the public within a particular EU member state. This could have significant implications for whether an EU-wide injunction is granted, or alternatively whether such relief will only be granted in those EU members where confusion is likely. The CJEU held that while German-speaking consumers may confuse COMBIT with COMMIT for computing goods and services, English-speaking consumers would perceive the former as an abbreviation of ‘com’ and ‘bit’ that was not particularly distinctive for the products concerned, while understanding the latter to refer to commitment. Conceptual dissimilarity would therefore strongly counteract any phonetic similarity resulting in no confusion for this linguistic group.87 According to the CJEU, it ‘should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question’.88 ‘Generally speaking, the consumers’ level of attention in view of a category of goods is qualified as high, average, or low, depending on the category of goods. The consumer’s level of attention will be average when the goods at issue are ordinary consumer goods 82 B. Beebe, ‘Search and Persuasion in Trademark Law’ (2005) 103 Michigan Law Review 2020; T. Lee, G. Christensen, and E. DeRosia, ‘Trademarks, Consumer Psychology, and the Sophisticated Consumer’ (2008) 57 Emory Law Journal 575. 83 Case C-532/10 P adp Gauselmann GmbH v OHIM, EU:C:2011:433, [51]. 84 Enterprise Holdings (n 34), [139]. 85 Case T-164/17 Apple and Pear Australia Ltd v EUIPO, Pink Lady America, EU:T:2018:678, [53]. 86 Case T-435/07 New Look v OHIM EU:T:2008:534, [23]; Case T-307/09 Earle Beauty v OHIM EU:T:2010:509, [26] (The ‘number of countries where basic English can be understood is greater than the number of countries where English is the native language’). 87 Case C-223/15 Combit Software GmbH v Commit Business Solutions Ltd EU:C:2016:719. 88 Lloyd Schuhfabrik (n 55), [26].

The Perspective of the Average Consumer 179 intended for the general public [such as conventional beverages and foodstuffs]’.89 The court has held that since olive oil is a consumer product which is very common in Spain, the level of attention of the average Spanish consumer with respect to its external appearance is low.90 More generally, a lower degree of attention is associated with habitual buying behaviour, involving inexpensive and frequently purchased products.91 By contrast, a high degree of attention can counteract the ‘imperfect recollection’ of consumers who are presumed not to have the luxury of comparing products side by side. Attentive consumers are less likely to be confused. Where the prior EUTM KA for automobiles was relied on to oppose CA for vehicular lighting and signalling apparatus, the differences between the marks combined with ‘the fact that the goods at issue are generally purchased after they have been seen and the high level of attention of the relevant consumer’ meant that confusion was unlikely, notwithstanding imperfect recollection.92 The English High Court concluded that the mark FIDELITY for financial, investment, and insurance services is unlikely to be infringed by FIDELIS, used by underwriters for speciality insurance services. According to Arnold J the ‘key factor. . . [was] the high degree of knowledge, care and attention exercised by the average consumer. Despite the distinctive character of [the prior mark], the similarity between FIDELITY and FIDELIS and the similarity between the respective services. . . the average consumer is not likely to be confused’.93 A further point to consider is the presence of intermediaries. Where a professional intermediary advises the end-purchaser and influences their purchasing conduct, this could limit the potential for confusion. This is often relevant for medicine—for example, prescription medication which is sold via pharmacies94—but also true for sophisticated products such as financial services.95 A higher degree of attention is associated with products that are expensive purchases, potentially hazardous or technically sophisticated, as well as those where consumers are guided in their purchases by professional assistance.96 Where the products were non- metallic building materials and the treatment of such materials, including bleaching and fireproofing, the GC concluded that the relevant public were ‘[p]‌rofessionals in the building sector and DIY enthusiasts [who] have a high degree of attentiveness at the time of purchase, because of the specialised nature of the goods and services in 89 P. Maeyaert and J. Muyldermans, ‘Likelihood of Confusion in Trademark Law: A Practical Guide Based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012’ (2013) 103(5) The Trademark Reporter 1032, 1043. 90 Case T-363/04 Koipe Corporación SL v OHIM, Aceites del Sur SA EU:T:2007:264, [108]; Aff ’d in Case C-498/ 07 P Aceites del Sur-Coosur SA v Koipe Corporación SL, OHIM EU:C:2009:503, [73]–[78] (The findings in relation to the average consumer’s level of attention are factual and cannot be appealed unless there is a distortion or substantive inaccuracy in relation to the appraisal of facts, which was not established). 91 See, e.g., Case T-407/15 Monster Energy v EUIPO, Hot-Can Intellectual Property, EU:T:2016:624, [29] (The ‘goods at issue are everyday foodstuffs, of low value and high frequency of purchase [so] the relevant public was the general public in the European Union having a relatively low level of attention’). 92 Case T-486/07 Ford Motor Company v OHIM EU:T:2011:104, [95]. 93 FIL Ltd & Anor v Fidelis Underwriting Ld [2018] EWHC 1097 (Pat), [153]. 94 Alcon v OHIM, Biofarma (n 46), [56]. For more detailed analysis, see Section 4.5 below. 95 FIL v Fidelis (n 93), [147]. More generally, see Case T-495/15 Sociedad agraria de transformación No.9982 Montecitrus v EUIPO, Spanish Oranges EU:T:2017:173, [26] (Depending ‘on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration’). 96 EUIPO Guidelines (n 33), §3.

180 Assessing Likelihood of Confusion question and, so far as professionals are concerned, their responsibilities’.97 The relevant public for bespoke, as opposed to off-the-shelf, computer software design and programming services has been held to include specialist dealers and purchasers as well as members of the general public, all of whom would have a high degree of attentiveness.98 Several decisions have also confirmed that consumers pay more attention for more expensive purchases.99 Nevertheless, where products are aimed at general consumers with average attentiveness, arguments that the juniors users’ goods are at the higher end of that product market and therefore involve heightened awareness usually do not succeed in opposition proceedings. An assertion that the junior applicant sold relatively more expensive clothes could not alter the finding that clothes are everyday consumer items associated with average attentiveness.100 This does however preserve the space to argue that within the broader product category specialist sub-categories, with more discerning consumers, exist. Alcoholic drinks are considered to be everyday products, whose consumers are deemed to have an average degree of attentiveness.101 Yet for an alcoholic drink like whisky, certain types of Scotch whisky might be examples of sub- categories which appeal to connoisseurs or even collectors, with enhanced attentiveness. Nevertheless, the party making this claim would need to positively establish that its products fall within this specialised sub-category.102 Finally, it should be borne in mind that a high degree of attention on the part of the relevant public is not a guaranteed inoculation against confusion. The interdependence principle, outlined at the start of this chapter, requires all factors to be taken into account such that where the marks are highly similar or identical for identical products, confusion may nevertheless arise despite consumer attentiveness.103 In a dispute before the Intellectual Property Enterprise Court (IPEC), both parties were using the sign RAID as an acronym (albeit with different component words being abbreviated) and the relevant consumer was identified as someone requiring mental health-related educational and training services, as well as instructional and teaching materials. This class consisted mainly, but not exclusively, of professional mental healthcare providers with high attention to detail. Despite this, the court found that due to the close similarity of marks and services, there were few details or differences for the average consumer to notice and confusion remained likely.104 97 Case T-768/15 RP Technik GmbH Profilsysteme v EUIPO EU:T:2017:630, [27]. 98 Case T-351/14 Construlink (n 74), [54]. 99 See, e.g., Case T-668/17 Maico Holding GmbH v EUIPO, Eico A/S EU:T:2018:567, [25] (It ‘must be borne in mind that, in the light of the nature of the goods concerned [i.e. apparatus for heating, refrigerating, drying and ventilating]—their durable, expensive and technical nature in particular—the average consumer will display a high level of attention when purchasing such goods’); Dear Choo, Trade Marks Registry (Opposition), O/286/16, [17] (While there is considerable variation within the categories of clothing, footwear, and headgear, the ‘level of attention. . . is likely to increase as the cost and importance of the item increases’). 100 Case T-453/12 Zoo Sports Ltd v OHIM, K-2 Corp EU:T:2013:532, [89]–[90]. 101 See, e.g., Case T-701/15 Stock Polska sp. z o.o. v EUIPO EU:T:2017:16, [22]. 102 Case T-250/15 Speciality Drinks Ltd v EUIPO EU:T:2016:678, [23]–[30]. 103 Case T-351/14 Construlink (n 74), [106] (‘Even though it must be held that [consumers of computing services’] level of attention will be higher than normal, it is not possible to rule out all likelihood of confusion in so far as the services at issue are identical and the marks at issue are similar and differ only in terms of weakly distinctive elements’.). 104 APT Training & Consultancy Ltd & Anor v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19, [133], [143] (IPEC).

The Perspective of the Average Consumer 181

4.5 Attributes of Specialised Sub-categories European trade mark law recognises certain specialised sub-categories of the relevant public, which have distinct features. The relevant public for pharmaceuticals is one of the best developed sub-categories, although recent years have seen the emergence of the ‘average Internet user’ in the context of search engines and Internet advertising.105 The attributes and perceptions of the latter could evolve as Internet literacy changes over time. Other sub-categories have been identified over time and case law refers to consumers of cosmetics, food, and clothing.106 However the average consumer or relevant public for pharmaceuticals is a better developed and therefore instructive case study. One aspect of consumer perception for pharmaceuticals will be developed in Section 8 of this chapter: where a mark contains a descriptive component, such as FEMI in the mark FEMIVIA and the products are pharmaceuticals directed at women, will this element have low distinctiveness (in light of its descriptive nature) from the consumers’ perspective? The GC’s approach is that such elements within a mark might be perceived as having low distinctiveness but nevertheless need to be considered as part of the overall impression produced by the mark. As a result, FEM or FEMI cannot be ignored or filtered out of the comparison between signs, even where the comparison is between FEMBION and FEMIVIA, with the descriptive elements being common.107 Since several pharmaceutical brands contain descriptive elements, this raises legitimate concerns in relation to the scope of the monopoly being granted. Four other specific features of this sub-category are worth emphasising. First, what are the sub-groups included within the average pharmaceutical consumer? For non- prescription or over-the-counter pharmaceuticals, the relevant public is the general public. For prescription medication, the relevant public includes the general public (the end-users of the medication) as well as healthcare professionals, a compendious phrase including the doctors who prescribe the medication, the pharmacists who sell or distribute it, and nurses who may help to administer it.108 While healthcare professionals can influence decisions of the general public (as end-users or patients), it is the perception of the latter—as the relatively least attentive group—which remains significant. According to the CJEU, ‘the fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by the end-users is not, in

105 Joined Cases C-236/08, C-237/08, and C-238/08 Google France v Louis Vuitton Malletier & Ors (CJEU) EU:C:2010:159, [99] (Assessing such a consumer in the context of their familiarity with Internet search engine results and associated advertising). See also: Interflora v Marks and Spencer (2014) (n 32), [112] (equating the average consumer with the average Internet user); Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd & Ors [2016] EWHC 2911 (Ch); Argos Ltd v Argos Systems Inc [2017] EWHC 231 (Ch). 106 Hasselblatt (n 25), 343–346. 107 Case T-324/13 Endoceutics, Inc v EUIPO EU:T:2014:672. 108 See, e.g., Case T-502/12 Ferring BV v OHIM EU:T:2014:192, [28] (It ‘is settled case-law that, where the goods in question are medicines, the relevant public is composed of medical professionals, on the one hand, and patients, as end-consumers of those goods, on the other’).

182 Assessing Likelihood of Confusion itself, capable of excluding all likelihood of confusion on the part of those consumers as regards the origin of the goods at issue’.109 Second, when constructing the average pharmaceutical consumer, are distinct policy considerations engaged? ‘With regard to health hazards posed by medication errors, the question arises whether, in the interest of end-consumers/patients, modified legal standards should apply for the assessment of the likelihood of confusion between pharmaceutical trade marks’.110 Decisions from the GC clarify that any such policy considerations are irrelevant from a trade mark infringement perspective. The ‘global assessment. . . must be carried out objectively and cannot be influenced by considerations that are unrelated to the commercial origin of the goods in question. . . Any harmful consequences linked to the incorrect use of a pharmaceutical product result from possible confusion on the part of the consumer as regards the identity or characteristics of the good at issue and not as regards their commercial origin’.111 This approach, which is not without its critics,112 is reinforced by the third feature associated with such consumers—the presumption that the relevant public for pharmaceuticals is careful and associated with a high degree of attention. As the GC puts it: ‘First, medical professionals display a high degree of attention when prescribing medicinal products. Secondly, with regard to end-consumers, it can be assumed, where pharmaceutical products are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products. Furthermore, even supposing a medical prescription to be mandatory, consumers are likely to display a high degree of attention when the products in question are prescribed, having regard to the fact that they are pharmaceutical products’.113 Thus ‘medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect’.114 The fourth distinctive attribute of pharmaceutical consumers is that they often encounter allusive brand names. For instance, BOTOX refers to its active ingredient botulinum toxin. The extent to which they can make sense of them is often a matter of contention, since it determines aspects such as conceptual similarity and the degree of distinctiveness (i.e. strength) of a mark. The GC has confirmed that consumers would interpret RESPI as a reference to respiratory, VISC as a reference to viscosity and NICO as a reference to

109 Case C-412/05 P Alcon Inc v OHIM (n 46), [57]. 110 S. Hanne, ‘Case Law on Pharmaceutical Trade Marks from the Court of Justice of the European Union’ (2011) 6(1) Journal of Intellectual Property Law & Practice 43, 43. 111 Case T-202/04 Madaus v OHIM, Optima Healthcare ECLI:EU:T:2006:106, [31]–[32]; Case T-48/06 Astex Therapeutics Ltd v OHIM EU:T:2008:329, [69]. 112 M. Planck, Study on the Overall Functioning of the European Trade Mark System (2011), 106 (Expressing concern ‘that marks for pharmaceutical products may be closer to each other than marks for other consumer products’ notwithstanding the imperfect recollection of consumers). 113 Case T-502/12 Ferring BV (n 108), [28]. See also Case T- 95/ 07 Aventis Pharma v OHIM, Nycomed EU:T:2008:455, [27]–[29]. 114 Case T-261/17 Bayer AG v EUIPO, Uni-Pharma EU:T:2018:710, [33].

The ‘Likelihood’ Standard 183 nicotine.115 In other cases, the allusive reference is apparently a stretch too far for the consumer imagination; VIR will not be seen as a reference to antiviral.116

5. The ‘Likelihood’ Standard While the hypothetical average consumer is reasonably observant and circumspect, this is somewhat undermined by the ambiguity surrounding the ‘likelihood’ of confusion. Just how serious does a risk of confusion have to be? This issue has not been addressed directly by the CJEU till date. One obvious concern is that the test might drift towards a standard which is satisfied if the mere risk of confusion cannot be ruled out for some part of the relevant public, as opposed to a more robust standard requiring confusion to be more likely than not for mainstream or representative consumers. The former seems to have been ruled out by the CJEU in Marca Mode.117 The court ruled that the mere inability to rule out the possibility of confusion was not sufficient to satisfy the test. However, the latter—confusion being more likely than not, on a balance of probabilities—is too demanding a test, despite this formulation continuing to be adopted by the UKIPO.118 The senior mark owner need only argue that there is a risk of this mental state occurring.119 As Arnold J put it, this ‘is not a binary question: is the average consumer confused or is the average consumer not confused? Rather it requires an assessment of whether it is likely that there is, or will be, confusion, applying the standard of perspicacity of the average consumer. It is clear from the case law that this does not mean likely in the sense of more probable than not. Rather it means sufficiently likely to warrant the court’s intervention’.120 When combined with the ‘substantial proportion of the public’ requirement, the test lends itself to speculation, since there is no guidance on what qualifies as substantial or significant. It leaves room for arguments that there is a risk that a significant-yet-undefined minority of the relevant public might be confused in the future.121 Such a loosening of the standard, encouraging speculative claims, is more likely to be found in relative grounds analysis before a trade mark registry since 115 See respectively Case T-256/04 Mundipharma AG v OHMI EU:T:2007:46; Case T-106/07 Alcon v OHMI EU:T:2008:340; Case T-580/11 McNeil AB v OHIM, Alkalon ApS, EU:T:2013:301. 116 Case T-149/08 Abbott Laboratories v OHIM, aRigen Inc, EU:T:2010:398. 117 Case C-425/98 Marca Mode CV v Adidas AG (CJEU) EU:C:2000:339, [40]–[42]. 118 UKIPO Trade Marks Manual (2019), Examination Guide, Part C, Section 2.3 (‘Likelihood of confusion means that it is more likely than not that confusion will arise in the mind of the average consumer as to the origin of the goods/services at issue when comparing two or more trade marks.’). 119 Canon (n 4), [29] (The ‘risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion’) (emphasis added); Case C-425/98 Marca Mode CV v Adidas AG (AGO) EU:C:2000:56, [AG8] (‘Most versions [of the TMD] other than the English use the notion of “risk” or “danger” of confusion and association rather than “likelihood” ’). 120 Interflora v Marks and Spencer (2013) (n 42), [224], [185]. 121 For critiques in the equivalent US context, see B. Beebe, ‘Search and Persuasion in Trade Mark Law’ (2005) 103 Michigan Law Review 2020; M. Grynberg, ‘Trade Mark Litigation as Consumer Conflict’ (2008) 83 New York University Law Review 60; M. A. Lemley and M. McKenna, ‘Irrelevant Confusion’ (2010) 62 Stanford Law Review 413; A. C. Yen, ‘The Constructive Role of Confusion in Trade Mark’ (2014–15) 93 North Carolina Law Review 77.

184 Assessing Likelihood of Confusion the analysis is paper-based and formalistic (see Section 7 of this chapter). It is therefore important to counteract this by recalling that the risk needs to be serious or plausible. Tribunals must consider whether there is a genuine and properly substantiated likelihood of confusion;122 it is not enough that confusion is hypothetical and remote.123

6. Evidencing Confusion As this chapter has established, the question of whether one mark is likely to be confused with another must be answered by a judge or trade mark registry official, by adopting the perspective of the relevant public or average consumer. This hypothetical vantage point necessarily implies that the question cannot be answered on a purely empirical basis.124 It is ultimately a question for the tribunal. It is also often the case that ‘where the relative grounds are heard by the Registrar, the mark will not have been used, thus there will be no evidence of actual confusion’.125 The GC has confirmed that ‘it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’.126 Thus where ‘what is in issue is an ordinary consumer product the court is not normally assisted by the evidence of individual consumers to establish what impression is conveyed by a sign. . . The court has to make its own assessment, taking into account all relevant circumstances’.127 However, while evidence of actual confusion is not a necessary requirement under the test, it often persuasive where it exists.128 As Arnold J observed, ‘it is not necessary for the claimant in an Article 9(1)(b) [CTMR 2009] claim to prove any actual confusion at all in order to succeed. What matters is whether the court considers that there is a likelihood of confusion. In my judgment the evidence of actual confusion supports the conclusion that there is a likelihood of confusion’.129 This evidence might take the form of the testimony of an employee relating an encounter with a confused consumer, or the direct testimony of the confused consumer, if they can be traced, are credible and are willing to participate in litigation. By contrast, if both marks co-exist for a sufficiently long period without any confusion, this may favour the junior user.130 122 Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (AGO) EU:C:1998:522, [AG24]. 123 Ibid, [AG20]. See also Marca Mode (n 119), [AG35] (‘marks should be registrable in the absence of a genuine and properly substantiated risk of confusion’). 124 On the part-empirical/part-normative nature of the consumer in EU trade mark law, see Dinwoodie and Gangjee (n 58). 125 L. Bently, B. Sherman, D. Gangjee, and P. Johnson, Intellectual Property Law (5th edn, OUP, 2018) 1049 (hereafter BSGJ). 126 Case T-346/04 Sadas SA v OHIM, LTJ Diffusion EU:T:2005:420, [69]; Case T-538/15 Regent University v EUIPO, Regent’s College EU:T:2017:226, [79]. 127 Bayerische Motoren Werke Aktiengesellschaft v Technosport London Ltd [2017] EWCA Civ 779, [24] (Floyd, LJ), citing to Interflora Inc v Marks & Spencer Plc [2012] EWCA Civ 1501 (Interflora I), [40]–[43]. 128 Comic Enterprises (n 27), [102] (evidence of actual confusion, including ‘wrong way round’ confusion where the relevant public thought the claimant was affiliated to the more famous defendant, was persuasive); Enterprise Holdings (n 34), [208]–[215]. 129 Och-Ziff Management Europe Ltd & Anor v OCH Capital LLP & Ors [2010] EWHC 2599 (Ch), [117]. 130 See, e.g., Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch), [167]; JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290, [181]. Co-existence without complaint needs to be considered alongside the doctrine of honest concurrent use, which operates like a true defence. The latter acknowledges that where there is sufficient

Evidencing Confusion 185 If the mark and the sign have both been used and there has been actual confusion between them, this may be powerful evidence that their similarity is such that there exists a likelihood of confusion. But conversely, the absence of actual confusion despite side- by-side use may be powerful evidence that they are not sufficiently similar to give rise to a likelihood of confusion. This may not always be so, however. The reason for the absence of confusion may be that the mark has only been used to a limited extent or in relation to only some of the goods or services for which it is registered, or in such a way that there has been no possibility of the one being taken for the other. So there may, in truth, have been limited opportunity for real confusion to occur.131

Tribunals are therefore aware that the inability to produce evidence of actual confusion can be explained by a range of circumstances, including the difficulty of obtaining such evidence.132 While in principle peaceful coexistence is a factor which might favour the junior user,133 this argument has not met with much success in opposition disputes relating to EUTMs.134 Besides evidence of actual confusion, the EU Trade Mark Regulation (EUTMR) contains an indicative list of the means for providing evidence in general, which includes categories of evidence relevant for the likelihood of confusion test.135 One such category is expert testimony but the importance accorded to such evidence depends on (i) the purpose of the evidence and (ii) the nature of the trade in question.136 Therefore ‘evidence similarity between marks and goods, there might be some confusion but as this is justified—based on longstanding concurrent use in good faith—it must be tolerated: IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439; Victoria Plum v Victorian Plumbing (n 105), [59]–[74] (Carr J). 131 Maier v Asos (n 6), [80] (Kitchin LJ). 132 Phones 4U Ltd v Phones4u.co.uk Internet Ltd [2006] EWCA Civ 244, [41]–[45] (In the context of a parallel passing off claim, dismissing evidence of peaceful coexistence as having little probative value, since there was no substantial side-by-side trade); 32Red plc v WHG (International) Ltd [2011] EWHC 62 (Ch), [102] (Henderson J); Case T-285/12 The Cartoon Network v OHIM, Boomerang TV SA EU:T:2013:520, [54] (evidence merely of coexistence on the trade mark register, without evidence of coexistence in the actual market, was insufficient); aff ’d Case C-670/13 P, EU:C:2014:2024. 133 Case C-482/09 Budějovický Budvar, národní podnik, v Anheuser-Busch Inc, EU:C:2011:605, [83] (On the facts, a ‘long period of honest concurrent use of two identical trade marks designating identical products neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services’ and will not infringe rights); Case C-498/07 P Aceites del Sur-Coosur v Koipe, EU:C:2009:503, [82]–[83] (While ‘the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public’ certain conditions such as ‘peaceful’ coexistence must be fulfilled); Case C-93/16 Ornua Co-operative Limited v Tindale & Stanton Ltd España, SL EU:C:2017:571 (For EUTMs, peaceful coexistence must be established across the EU. Differences in perception and pronunciation across the EU mean that peaceful coexistence in one part of the EU cannot be extrapolated across the entire EU). 134 A prominent example concerning SKY v SKYPE is found in Case T-423/12 Skype Ultd v OHIM, Sky Plc EU:T:2015:260, [63]–[70] (‘Coexistence concerning only one isolated and highly specific service among a long list of goods and services covered by the marks at issue cannot diminish the likelihood of confusion for the entirety of those goods and services’). See also Case T-596/15 Batmore Capital Ltd v EUIPO, Univers Poche EU:T:2017:103, [83]–[84] (In a dispute relating to POCKET v POCKETBOOK, mere coexistence on the trade mark register or other marks containing POCKET was insufficient to dispel confusion); Case T-351/14 Construlink (n 74), [108] (the marks at issue must be identical and it must be established that coexistence is based on the absence of any likelihood of confusion). 135 EUTMR, Art. 97 (Referring inter alia to documentary evidence, hearing witnesses, sworn affidavits, and expert opinion). See also EUIPO Guidelines, Part A—General Rules, Section 2—General Principles to be Respected in Proceedings, §4. 136 Kerly (n 42), [23-008].

186 Assessing Likelihood of Confusion of how trade is conducted in a specialist field is much more likely to be admitted than evidence concerning mundane, everyday purchases such as groceries’.137 In so far as a tribunal would benefit from being informed as to how a trade sector operates, evidence in relation to retail practices, the manner in which consumers make purchases, how their requests are worded, as well as systems of handling orders are relevant.138 In the EUTM context, linguistic expert reports may also be submitted with an eye to the phonetic aspects of marks in different languages.139 However expert evidence directly addressing the question of whether consumer confusion is likely will not be given much weight. Given ‘that the critical issue of confusion of any kind is to be assessed from the viewpoint of the average consumer, it is difficult to see what is gained from the evidence of an expert as to his own opinion where the tribunal is in a position to form its own view’.140 The final category to consider is survey evidence. When assessing whether consumers are likely to be confused, it is seductively simple to suggest we should just ask them, using the same methods adopted by market researchers or public opinion pollsters. In Gut Springenheide, a dispute concerning misleading marketing standards for eggs but frequently cited in a trade mark context, the CJEU acknowledged that ‘in certain circumstances at least, a national court might decide, in accordance with its own national law, to order an expert’s opinion or commission a consumer research poll [in order to clarify whether a promotional statement is misleading]. . . it is for the national court, which may find it necessary to order such a survey, to determine, in accordance with its own national law, the percentage of consumers misled’.141 It can be plausibly argued that the standard of a likelihood of confusion, from the perspective of the average consumer, will be satisfied if a properly designed market survey demonstrates actual confusion for a significant percentage of consumers, albeit in an experimental context.142 It ‘is often said that proof of actual confusion is the best evidence of likely confusion’,143 whilst accepting that this is one factor to be balanced against others as part of global appreciation. Litigants therefore seek to adduce survey evidence which proves that marks are confusingly similar,144 or to use surveys to identify a list of individual witnesses who have been confused, even though that group might

137 Ibid, [23-011]. 138 P. Lambert, ‘More Than Meets the Eye: Expert Evidence Varies in Intellectual Property Infringement Cases’ (2018) 40(3) European Intellectual Property Review 178, 183. On the factors to be relied on when deciding whether trade evidence is to be treated as expert evidence in the UK and procedurally regulated as such, see: Fenty & Ors v Arcadia Group Brands Ltd (t/a Topshop) [2013] EWHC 1945 (Ch) (Birss J). 139 Case C-268/12 P Cadila Healthcare Ltd v OHIM, Novartis AG, EU:C:2013:296, [36], [42] (Referring to uncontested expert evidence as to whether there was a strong phonetic similarity between the marks at issue in Spanish and Portuguese). 140 esure Insurance Limited v Direct Line Insurance plc [2008] EWCA Civ 842, [62] (per Arden LJ); Hasbro v 123 Nahrmittel (n 45), [33]–[38] (Floyd J). 141 Case C-210/96 Gut Springenheide and Tusky (n 55), [35]–[36]. 142 T.C. Jehoram et al., European Trademark Law: Community Trademark Law and Harmonized National Trademark Law (Kluwer, 2010), 291–292. 143 Dinwoodie and Gangjee (n 58) 351. 144 See generally, J.T. Berger and R.M. Haligan, Trademark Surveys: A Litigator’s Guide (Matthew Bender, 2019); S. Diamond and J.B. Swann (eds), Trademark and Deceptive Advertising Surveys: Law Science and Design (American Bar Association, 2012).

Evidencing Confusion 187 be a statistically unrepresentative percentage of those surveyed (i.e. a witness collection exercise).145 However three inter-related arguments are ranged against surveys. First, surveys drive up costs for parties. Surveys are costly to conduct, while the validity of this form of evidence is frequently contested before tribunals leading to additional expense.146 Second, surveys need to have sufficient probative value, which depends on the reliability of the method used.147 Aspects which are especially scrutinised include whether the appropriate universe of consumers has been identified, whether a representative sample of that universe was selected, the extent to which the data was accurately recorded and the validity of methods of analysis, whether clear and non-misleading questions were asked and whether the process as a whole was suitably objective.148 Third, the survey will rarely offer any insights that cannot be gained by the judge from the evidence of the parties, especially where this relates to commonplace or ordinary consumer goods and services. It is presumed that the judge can adopt the relevant perspective without requiring the effort and expense of a survey.149 Tribunals in the UK therefore emphasise that permission is required before any such evidence can be introduced.150 With an eye to procedural economy and more efficient case management, the standard that is now adopted is: A judge should not let in evidence of [surveys or witness collection exercises] unless the party seeking to call that evidence satisfies him (a) that it is likely to be of REAL value; and (b) that the likely value of the evidence justifies the cost (emphasis in the original).151

Surveys remain relevant in other areas of trade mark law, such as proving acquired distinctiveness or fame, in order to benefit from anti-dilution protection.152 However a cautious approach to likelihood of confusion surveys, subject to the calculus of costs and benefits, does not inevitably signal the end of surveys in an infringement or relative

145 See Interflora I (n 127). The origin of witness collection exercises in the UK is attributed to the stringent requirements for admitting survey evidence compliant with the Whitford Guidelines, introduced in Imperial Group plc & Another v Philip Morris Limited & Another [1984] RPC 293. 146 See the cases cited in Weatherall ‘Consumer as Empirical Measure’ (n 56), 65. 147 Case T-261/17 Bayer AG v EUIPO (n 114) , [59]–[68]. 148 As conveniently set out in the US decision: Charles Smith v Walmart Stores 537 F. Supp. 2d 1302 (2008) (ND Georgia). Similar concerns are articulated in: esure Insurance (n 140) [62]–[64]; Whirlpool Corporation v Kenwood Ltd [2008] EWHC 1930 (Ch), [35] (Geoffrey Hobbs QC) (Observing that questionnaires ‘intrude as a foreign element into the social setting they would describe, they create as well as measure attitudes, they elicit atypical roles and responses’). 149 Interflora I (n 127), [45]–[56]. By contrast, if the goods are highly specialised or the survey relates to a matter beyond the judge’s ability to draw inferences, such as whether a mark has acquired distinctiveness, then surveys are more acceptable. 150 Ibid. See also UK IPO Tribunal Practice Notice 2/2012 (w.e.f. 16 July 2012) (Survey evidence and expert witness evidence could only be adduced in trade mark proceedings before the IPO with the permission of the Hearing Officer). 151 Interflora v Marks and Spencer (2013) (n 32), [26] (Lewison LJ). 152 U. Lüken, P. Brownlow, and N. Aries ‘How Courts View Surveys in Trade Mark Cases’ (2015) Managing Intellectual Property 43; I. Fhima, ‘Introducing Reality into Trade Mark Law’ (2014) 9(8) Journal of Intellectual Property Law & Practice 684.

188 Assessing Likelihood of Confusion grounds context. Some jurisdictions embrace a court-sanctioned survey format or the use of survey experts appointed directly by tribunals (or jointly by the parties), which increases reliability while reducing costs.153 Research also suggests that surveys continue to be practically relevant, by helping clients decide whether to litigate or encouraging parties to settle.154 Others are more circumspect about the alternative to surveys—leaving the matter entirely to a single hearing officer or judge—and would prefer those applying trade mark law to be more open to (laboratory or field based) experimental evidence, which can (i) substantiate specific stages or waypoints in the consumer confusion enquiry—for instance, are consumers likely to perceive two signs as being similar—or (ii) provide a better informed overarching framework for understanding consumer perception and decision making in the real world (for instance, a consumer construct informed by insights from behavioural psychology). Multiple ‘independent measurements, or assessments, will often be closer to the “truth” than any single measurement or assessment. . . [Therefore taking] even five or ten measures and averaging them provides a markedly better estimate of the true value than taking a single measure’.155 This implies that even a small-scale experimental test investigating how consumers would react to certain signs would be preferable to relying on the impression of a single judge.

7. The Relevance of Context: Relative Grounds Versus Infringement There are subtle yet significant differences in the application of the likelihood of confusion test in relative grounds analysis, before trade mark registries, on the one hand (Art 5(1)(b) TMD 2015; Art 8(1)(b) EUTMR) and infringement analysis before courts on the other (Art 10(2)(b) TMD 2015; Art 9(2)(b) EUTMR). The CJEU has confirmed that the version of the test used in relative grounds analysis is more abstract, based on the opponent’s senior mark as registered and the applicant’s junior mark on the application form, bearing in mind ‘all the circumstances in which the mark applied for might be used if it were to be registered’.156 Therefore the analysis looks to the register and is primarily ‘paper-based’.157 It includes the notional and fair use of the senior registered mark across all the products for which it is registered and the junior user’s application if

153 INTA, Report on Best Practices in Conducting Surveys in Trademark Matters (2013). 154 S. S. Diamond and D. J. Franklyn, ‘Trademark Surveys: An Undulating Path’ (2014) 92(7) Texas Law Review 2029. 155 Weatherall ‘Consumer as Empirical Measure’ (n 56), 70. 156 Case C-533/06 O2 Holdings Ltd v Hutchison 3G Ltd EU:C:2008:339, [66]. See also Specsavers International EWCA (n 6), [78]–[88] (Kitchin LJ). 157 On the significance of registration for defining the scope of rights, see Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks EU:C:2012:361, [37] (IP TRANSLATOR) (The ‘registration of a sign as a trade mark must always be applied for in relation to certain goods or services. Although, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark. . . the extent of that protection is determined by the nature and the number of goods and services identified in that application’).

Relevance of Context: Relative Grounds Versus Infringement 189 it were to be granted for the full range of goods and services requested.158 ‘By contrast, in [an infringement context, the unauthorised third party] does not assert any trade mark rights over that [contested] sign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the proprietor of the registered mark is entitled to oppose that specific use, the assessment must be limited to the circumstances characterising that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion’.159 Infringement analysis therefore looks to the context of actual usage. This is true for both the senior user’s sign, to a more limited extent, and the junior user’s sign, to a greater extent. For the senior user’s registered trade mark, the starting point for assessment is the manner in which it is described on the register.160 It is clear that the way in which a trade mark proprietor actually uses the sign in commerce will not serve to narrow or restrict the scope of formal proprietary rights derived from registration.161 However the manner in which the senior user actually uses the mark can strengthen aspects of the infringement claim, by emphasising the similarity between signs. In Specsavers, where the claimant and defendant were each using two overlapping oval shapes in shades of green, the CJEU addressed the following issue: ‘where [an EUTM] is not registered in colour [i.e. the registration is in black and white], but the proprietor has used it extensively in a particular colour or combination of colours so that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, [is] the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark. . . relevant in the global assessment of the likelihood of confusion’?162 Since the test relies on the overall impression of the marks upon the average consumer and the enhanced distinctive character of the claimant’s mark, including distinctiveness acquired through use, increases the scope of protection, it would be illogical to exclude from consideration the actual colour of use by the claimant. Despite the fact that Specsavers’ mark was registered in black and white, its use in a specific shade of green would increase the association with the defendant’s sign, which was also green and therefore this actual usage by the claimant should be taken into consideration.163 Specsavers was specifically about the senior mark being used in a certain colour and there may only be a limited range of other situations where the senior mark’s context of use will be relevant. Courts may otherwise stray too far from the trade mark register as the point of reference.164 For example, the Court of 158 Reed Executive v Reed Business Information (n 38), [79]–[81] (Jacob LJ). See also Fhima and Denvir (n 10) (Empirically confirming that relative grounds analysis carried out by the EUIPO and the GC has not prioritised the factors of enhanced distinctiveness based on use and actual confusion in the market). 159 Case C-533/06 O2 Holdings (n 156), [67]. 160 The authorities are reviewed in Specsavers International EWCA (n 6), [89]–[96] (Kitchin LJ). 161 British Sky Broadcasting Group Plc & Ors v Microsoft Corporation Microsoft & Anor [2013] EWHC 1826 (Ch), [76]–[78] (Asplin J). 162 Case C-252/12 Specsavers International and Ors v Asda Stores Ltd, EU:C:2013:497, [32]. 163 Ibid, [37]–[38]. 164 Goldbären I ZR 105/14, 23 Sep 2014 (BGH); also reported as HARIBO GmbH v Chocoladenfabriken Lindt & Sprüngli [2016] ETMR 23, 534 (BGH) (rejecting the argument that Lindt’s gold wrapped chocolate teddy bear shape infringed Haribo’s GOLDBÄREN word mark: ‘There is nothing in [Case C-252/12 Specsavers] to suggest

190 Assessing Likelihood of Confusion Appeal did not accept the argument that the similarity between gameplay mechanics for word game application software under the protected mark SCRABBLE, should—as part of its context or extraneous matter—be included in the likelihood of confusion assessment.165 The CJEU has also clarified that relative grounds analysis cannot take into consideration the specific context in which the junior user uses or intends to use the mark. The analysis depends upon the notional use of the junior user’s sign across all categories of products applied for. The manner of use by the subsequent applicant must be objectively construed based on the usual conditions of trade for that type of product. As an example, the objective conditions under which watches and watch straps are generally sold—through a salesperson providing advice on technical details, without customers having direct access to the goods—is relevant.166 However the subjective commercial intentions of the parties, such as assurances that the junior user will instruct its salespeople to take great care to avoid confusion, cannot be taken into account since this is contingent upon the discretion of the junior user and could vary over time.167 By contrast, it is necessary to consider the specific context of the defendant’s use for infringement analysis, as confirmed by the CJEU in O2.168 In O2 the eponymous claimant, a mobile phone services provider, brought an infringement claim against Hutchinson, a competitor, for a comparative advertising campaign which made use of bubble imagery commonly associated with the O2 brand. Before the national court, O2 argued that the similarity assessment should be limited to a ‘straight comparison between the sign complained of and the registered mark’.169 The analysis should therefore exclude the so-called external matter comprising the comparative advertisement and discount the fact that the sign had been used for comparing competing products.170 The CJEU rejected this argument and preferred the referring court’s approach. The context, including the voiceover, soundtrack, and text displayed during the course of the comparative advertisement were relevant aspects of the defendant’s use, which could help to offset any confusion. that, over and above the aforementioned [colour of actual use], the specific context in which the trade mark is used for particular goods or services is a significant aspect when assessing the similarity of trade marks. The view expressed in the appeal, namely that the shape of the product [here, Haribo gummy bears] for which the trade mark in suit is used must be taken into consideration when assessing the similarity of trade marks, is contrary to the nature of trade mark law as a registration law’). 165 JW Spear & Sons Ltd & Ors v Zynga Inc [2015] EWCA Civ 290, [41]–[48], [178] (Floyd LJ) (This formulation of context was found to be too broad: ‘if something appears routinely and uniformly in immediate association with the mark when used by the proprietor, it should be taken into account as part of the relevant context’); Cf. Hearst Holdings (n 24) (broadening out the device mark, consisting of one depiction of the cartoon character Betty Boop, to encompass various other poses in which she appeared); Comic Enterprises (n 27), [6]‌–[11], [102]–[106] (where evidence of the claimant’s mark-as-used on signage at comedy venues supported the conclusion that there was a risk of confusion). 166 Case C-171/06 P T.I.M.E. ART v OHIM EU:C:2007:171, [59]. 167 Case C-354/11 P Maurice Emram v OHIM, Guccio Gucci SpA, EU:C:2012:167, [73]. 168 Case C-533/06 O2 Holdings Ltd (n 156), [60]–[67]; see also Case C-245/02 Anheuser-Busch Inc v Budějovický Budvar, np EU:C:2004:717, [61]–[63] (the context of the labelling used on the beer in dispute was relevant for assessing infringement). 169 O2 Holdings Ltd v Hutchison 3G Ltd [2006] EWCA Civ 1656, [26]. 170 Ibid, [107]–[110].

Relevance of Context: Relative Grounds Versus Infringement 191 In acknowledging the relevance of context in infringement, we shift our focus away from the trade mark register as a comprehensive indicator of the scope of trade mark rights. To this extent it might be suggested that the conventional boundary between the law of registered trade mark protection and unfair competition law (including passing off) is eroding.171 The latter, with its emphasis on preventing specific instances of misconduct, generally adopts a contextual approach when assessing a defendant’s use. However a moment’s reflection indicates that the register has increasingly become only the starting point when assessing the scope of a trade mark owner’s right to exclude others. The confusion test extends to similar signs and similar products, beyond those precisely delineated on the register (see Chapters 2–4). The confusion test is further influenced by the distinctiveness of the proprietor’s mark, including acquired distinctiveness based on use in the marketplace (see Chapter 5 and Section 8.2 of this chapter). And contextual evidence relating to the manner and duration of the defendant’s use can convincingly establish that a conflict on paper need not translate into a conflict in reality. Infringement analysis therefore ought to be different from relative grounds analysis in this regard. In relation to the defendant’s context of use, two issues are pertinent: first, what precisely is the defendant’s sign? Amidst all the advertising material, decorative colours, descriptive text, instructions, and other contextual material, how should we ‘zoom in’ on or isolate the sign that is allegedly infringing? The tighter or closer the framing, the easier it is to argue that the claimant’s mark and defendant’s sign are similar. This has been considered only to a limited extent in the case law.172 The approach may best be summarised as follows: what would the average consumer consider to be the defendant’s sign?173 If the defendant’s sign—the proposed target of infringement analysis—is a visually (for example by using the same font or colours) or syntactically interlinked entity then it might be perceived by consumers as a single sign. Where the claimant was the registered proprietor of PLAY-DOH, predictably enough it attempted to focus on PLAY DOUGH in the defendant’s strapline ‘THE EDIBLE PLAY DOUGH’ but this was resisted by the court, since consumers would consider the strapline as a whole.174 By contrast, in Specsavers, the defendant consciously emphasized a part of the advertising slogan via a grammatically incongruous usage; thus ‘spec saver’ could be isolated within the slogan ‘Be a real spec saver at Asda’ because it was not the usual mode of describing a prudent and price conscious purchaser. It was evidently designed to evoke the market leader SPECSAVERS and could legitimately be considered as the target sign.175 171 See A. Ohly, ‘Interfaces between Trade Mark Protection and Unfair Competition Law: Confusion about Confusion and Misconceptions about Misappropriation?’ in N. Lee, G. Westkamp, A. Kur, and A. Ohly (eds), Intellectual Property, Unfair Competition and Publicity: Convergences and Development (Edward Elgar Publishing, 2014) 33. 172 See also Chapter 8, Sections 3 and 4.4 for this issue in relation to non-traditional marks. 173 BSGJ (n 125) 1106–1108. 174 Hasbro v 123 Nahrmittel (n 45), [193]–[194]. However infringement was eventually established based on the strapline as a whole. 175 Specsavers International Healthcare Ltd v Asda Stores [2010] EWHC 2035 (Ch), [125]–[129] (Mann J); aff ’d Specsavers International EWCA (n 6), [87]–[88].

192 Assessing Likelihood of Confusion The second issue is this: what can be included within the parameters of a contextual assessment? The general position has been outlined by Kitchin LJ (as he then was) in Specsavers: In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.176

Post-Specsavers decisions by Arnold J (as he then was) have designated ‘Contextual Assessment’ as a discrete heading within the judgment.177 It is clear that each allegedly infringing use has to be considered separately, taking due account of its context. Thus in Enterprise Holdings, where two car rental companies were in dispute over the fact that both use an ‘e’ logo on a green background, likelihood of confusion was separately assessed for the defendant Europcar’s ‘e-moving’ logo being used (i) on its own; (ii) with descriptive sub-brands and EUROPCAR present only in small print; and (iii) with EUROPCAR displayed more prominently along with the advertising slogan ‘moving your way’.178 The additional context in the latter two scenarios would reduce the likelihood of confusion but not eliminate it. Similarly in Thomas Pink, Birss J took the view that ‘in principle each different presentation of PINK by the defendant is in issue and might need to be considered separately’.179 Four separate categories of use were analysed, including the use of the disputed sign PINK in marketing straplines or in combination with the defendant’s own reputed mark for VICTORIA’S SECRET. Where contextual analysis for each infringing use is not carried out, this can be the basis for a successful appeal.180 However where contextually distinct analyses would be too ‘burdensome to do so exhaustively’, courts retain the flexibility to ‘make findings in respect of. . . a representative selection of uses’.181 It is also likely that ‘the context and circumstances are limited to the actual context and circumstances of the use of the sign itself ’, thereby excluding circumstances prior to or subsequent to the use of the sign by the defendant.182 While some doubt has been cast on the helpfulness of this formulation,183 it appears possible to reconcile it with the CJEU’s guidance in O2.184 As part of this context, courts have considered the use 176 Specsavers International EWCA (n 6), [87] (Kitchin LJ). 177 See, e.g., Sky Plc v Skykick UK Ltd [2018] EWHC (n 51), [268]; W3 Ltd v Easygroup Ltd [2018] EWHC 7 (Ch), [211]. We are grateful to Luis Porangaba for pointing this out. 178 Enterprise Holdings (n 34), [71]–[81]. 179 Thomas Pink (n 28), [129]. 180 Merck KGaA v Merck Sharp & Dohme Corp [2017] EWCA Civ 1834 [261]–[285]. See also BMW v Technosport (n 127), [25]. 181 Frank Industries Pty Ltd v Nike Retail BV [2018] EWHC 1893 (Ch), [6]‌. 182 Och-Ziff v Och Capital (n 129), [77]–[78] (Arnold J). 183 Specsavers International EWCA (n 6), [86] (Kitchin LJ). 184 Red Bull GmbH v Sun Marks [2012] EWHC 1929, [74]–[78] (Arnold J).

Relevance of Context: Relative Grounds Versus Infringement 193 of the defendant’s own trade mark in proximity to the allegedly infringing sign, when assessing whether this is sufficient to ward off any confusion. However this argument had not met with much success where the sign itself was found to be confusingly similar. Prior to the CJEU’s decision in O2, under the former UK approach ‘it was settled law that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor’.185 This more conservative approach, which focused narrowly on the defendant’s sign, may no longer be valid post-O2. In Thomas Pink, the UK shirt-maker Thomas Pink initiated proceedings against the US clothing and lingerie producer Victoria’s Secret, when it opened two London stores selling lines of apparel under the PINK label, which it had been previously using as a sub-brand in the USA.186 For some of the defendant’s uses, VICTORIA’S SECRET was found to be sufficiently prominent, when juxtaposed with PINK, to avoid creating confusion, while in other situations, such as the use of PINK on the shop front, the use of the defendant’s own trade mark played only a minor role and the risk of confusion remained. In Jack Wills an even broader notion of context was adopted.187 The defendant department store, House of Fraser, had adopted a pigeon logo that was ultimately held to be confusingly similar to Jack Wills’ pheasant trade mark for clothing. The defendant had argued that in addition to it’s own LINEA menswear brand being used with the pigeon logo, customers were used to distinguishing between different bird logos on clothing; the LINEA menswear was sold in a distinct zone within the store; all of the goods in question bore LINEA labels and/or swing tickets; that House of Fraser does not sell Jack Wills clothing; and the customer age profiles varied.188 Arnold J acknowledged all these contextual aspects but concluded they would not be sufficient to eliminate initial interest or post-sale confusion. Finally, it is worth noting that disclaimer notices on the defendant’s goods or at the point of sale, which clarify that the defendant is not related to the claimant, can in principle form part of the context. While the CJEU has indicated that a disclaimer at the point of sale may be insufficient for eliminating the risk of confusion,189 it has also recognised that appropriate labelling on products, assessed in accordance with the sales practices in that commercial sector, is a relevant factor in

185 BP Amoco plc v John Kelly Ltd [2002] FSR 5 (NICA), 107–108 (Use of the defendant’s own mark TOP alongside the contested sign—a shade of the colour green—was not sufficient to prevent infringement); Julius Sämaan Ltd v Tetrosyl Ltd [2006] EWHC 529 (Ch), [52] (‘The court must consider the likelihood of confusion arising from the use by the defendant of the offending sign, discounting added matter or circumstances. If the sign and the mark are confusingly similar then the defendant cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the proprietor’). For a detailed study of this transition away from the approach under the 1938 Act, see L. Porangaba, Putting Functions in Context: Reconceptualising the Scope of Trade Mark Infringement (University of Oxford DPhil thesis, 2019). 186 Thomas Pink (n 28). 187 Jack Wills (n 52). 188 Ibid, [97]–[98]. Other examples, where the use of the defendant’s own trade mark alongside the contested sign would not prevent confusion, include: Frank Industries (n 181); Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner Limited t/a Trespass [2019] EWHC 118 (IPEC). 189 Case C-206/01 Arsenal Football Club v Reed EU:C:2002:651, [57]. Yet a keyword advertising case suggests that disclaimers might be sufficient to avoid consumer confusion: Cosmetic Warriors Limited and Lush Limited v Amazon.co.uk Limited and Amazon EU SARL [2014] EWHC 181 (Ch), [66].

194 Assessing Likelihood of Confusion preventing confusion.190 While the use of a disclaimer is limited to the sales outlet, a suitably designed label will follow the product into the stream of commerce and more effectively prevent mistaken assumptions from arising.

8. Other Factors 8.1 Family of Marks Likelihood of confusion usually involves a comparison between two marks or a mark and a sign. On occasion the comparison may need to be between the contested sign and the common element in a series or family of marks, since consumers might incorrectly think that the junior mark is a member of this family. Apple’s marks for inter alia iMac, iMovie, iPad, iPod, iPhone, and iTunes form one such series, with ‘i’ being the common element.191 The CJEU has affirmed, in Il Ponte Finanzaria SpA,192 that the existence of a family of marks is a relevant factor when assessing similarity. At issue in that case was whether some form of actual usage is a pre-requisite when assessing the likelihood of confusion in relation to marks belonging to a ‘family’ or ‘series’. The opponent was attempting to rely on the series of marks as they existed on the register, within the five year grace period when use does not have to be established to sustain a registration. The CJEU reasoned that: [No] consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market.193

It was therefore a requirement that the proprietor of the family of senior marks had to demonstrate ‘use of a sufficient number of them as to be capable of constituting a family or series of trade marks and therefore of demonstrating that such a family or series exists for the purposes of the assessment of the likelihood of confusion’.194

190 Case C-46/10 Viking Gas A/S v Kosan Gas A/S, previously BP Gas A/S, EU:C:2011:485 [39]–[41]; see also AG Kokott’s opinion in this case: EU:C:2011:222, [40]–[42]. 191 See . Apple also defensively asserted the existence of this family of marks when Swatch opposed its application for IWATCH: Apple Inc v Swatch AG, Trade Marks Registry, O/307/16, [31]–[32]. 192 Case C-234/06 P Il Ponte Finanzaria (n 8) (BAINBRIDGE unsuccessfully opposed on the basis of prior national marks all having the component ‘Bridge’ in common). 193 Ibid, [64]. 194 Ibid, [65].

Other Factors 195 In addition to the clear signal to consumers—via sufficient use for at least three or more marks—that a series or family exists, the common denominator across the series must be sufficiently distinctive such that consumers associate it with the series. ‘Several marks possessing common characteristics . . . [are] regarded as part of a “family” when, inter alia, they reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark’.195 Whether this distinctiveness threshold is met for the common element constitutes a factual assessment on which tribunals might reasonably disagree. Where UNIWEB and UniCredit Wealth Management were applied for, the prefix UNI, contained in the series of senior marks UNIZINS, UNIFONDS, and UNIRAK for banking services, was initially found to be insufficiently distinctive to ground an opposition.196 A number of financial funds had names beginning with ‘uni’, ‘union’, or ‘united’, while the remainder of the marks were different. This decision was subsequently reversed on remand on the basis that inter alia consumers paid greater attention to the beginning of words and the remainder of the marks consisted of descriptive terms.197 Finally, there needs still to be at least minimal similarity between the opponent and applicant’s mark. The CJEU has indicated that the likelihood of confusion standard is satisfied if consumers are mistaken into thinking the mark being applied for is part of the earlier family. The later mark should inter alia include the key element that is common to the family of marks, such that consumers think it is a new member of that family.198

8.2 Weakly Distinctive Marks or Elements of Marks If a mark consists entirely of a descriptive or laudatory element, or has such an element as a significant component, it may nevertheless be registered on the basis of acquired distinctiveness, or alternatively on the basis that other non-descriptive elements help the mark across the distinctiveness threshold. But once it is registered what scope of protection should such a mark be entitled to? What if the senior mark and junior mark coincide only in terms of their descriptive elements?199 The comprehensive Max Planck review of EU trade mark law concluded as a normative matter that ‘that weak signs can only claim a small scope of protection. . . [and] the assumption of a legally relevant trade mark conflict cannot be based on the fact that the signs correspond in a feature

195 Case T-518/13 Future Enterprises Pte Ltd v EUIPO, McDonald’s EU:T:2016:389, [43]–[45] (citing to). See also Case T-194/03 Il Ponte Finanzaria SpA v OHIM EU:T:2006:65, [124]. 196 Case T-303/06 & T-337/06, UniCredito Italiano v OHIM EU:T:2010:160, set aside by Case C-317/10 P, EU:C:2011:405. 197 Case T-303/06 RENV & T-337/06 RENV,UniCredito v OHIM EU:T:2014:988. 198 Case C-270/14 P Debonair Trading v OHIM, EU:C:2015:688 (The key element ‘SO. . . .?’, which was common to the earlier family of marks, did not coincide with the element ‘SÔ’ in the application). 199 For an overview, see A. Kur and M. Senftleben, European Trade Mark Law: A Commentary (OUP, 2017) 229–231.

196 Assessing Likelihood of Confusion for which no trade mark protection can be claimed [because that feature is descriptive or otherwise non-distinctive]’.200 The underlying tension is conveniently illustrated by the Starbucks dispute,201 where the senior Community Trade Mark (CTM) NOW was registered by Starbucks, a Hong Kong based enterprise (and not the famous coffee retailer), in relation to Internet television subscription and broadcasting services. The mark included a very modest figurative element consisting of radial spokes emanating from the word (Figure 6.1). The word element NOW by itself would have been perceived as a description of a characteristic of the service, namely the instant, immediate nature of the television service.202 Starbucks then commenced infringement proceedings against Sky for its NOW TV channel (Figure 6.2). The only element in common was NOW, which was argued to be descriptive.

Figure 6.1 Images reproduced from the High Court decision: [2012] EWHC 1842 (Ch)

Figure 6.2 Images reproduced from the High Court decision: [2012] EWHC 1842 (Ch)

Holding that the CTM was invalid on the basis of its descriptiveness and—in the alternative—Sky’s mark would be non-infringing, Arnold J offered the following words of caution: 200 Max Planck Study (n 112), 283. This conclusion was reinforced by the fact that the Study proposed (at 74–76) the removal of disclaimers—disclaiming non-distinctive elements in the application—when applying for EUTMs. This proposal was eventually adopted. 201 Starbucks (UK) Ltd v British Sky Broadcasting Group Plc & Others [2012] EWHC 1842 (Ch). 202 Ibid, [114]–[116]. Arnold J eventually invalidated the mark on this basis and this was upheld on appeal: Starbucks (HK) Ltd & Another v British Sky Broadcasting Group Plc & Others [2013] EWCA Civ 1465. The issue of when a figurative mark containing purely descriptive/non-distinctive word elements will be accepted for registration has been addressed in a non-binding common practice: European Trade Mark and Design Network, Common practice on distinctiveness: Figurative marks containing descriptive/ non- distinctive words (CP3, 2 Oct 2015)

Other Factors 197 [It] appears to me that [the claimant] only succeeded in obtaining registration of the CTM because it included figurative elements. Yet [the claimant] is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place.203

Judicial disapproval of a figurative fig leaf being used as cover for weakly distinctive marks, thereby allowing them to be registered as inherently distinctive, has been articulated in subsequent decisions.204 This perspective would prefer that such marks are not registered at all. The EUIPO Grand Board of Appeal has expressed the same concern while proposing a different solution. The global appreciation principle described at the start of this chapter should not be applied unidirectionally such that only strong marks get strong protection. Weak trade marks may be registered, but they should enjoy only a modest scope of protection. Whereas, a company is certainly free to choose a trade mark with a low or even non- distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components...205 The threshold [for whether use by a third party interferes with the origin function of a mark] is the perception of the relevant public. A sign or an element of it which is not distinctive cannot give rise to a perception of a particular trade origin, and a sign or an element of it which gives the public no references to a trade origin cannot suddenly do so simply because it also appears as an element in another mark. . . It would be against the rationale of the CTMR to give too much importance in the assessment of likelihood of confusion to non-distinctive elements (emphasis added).206

This reasoning continues to be applied in subsequent EUIPO opposition decisions and appeals.207 These are compelling arguments in favour of a tempered approach; one 203 Starbucks (n 201), [117]. 204 Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch), [58]. See also Grant v London Relocation Ltd, Trade Marks Registry, O/204/17, [40]. 205 Case R 1462/2012-G, Lifestyle Supplies V.o.F. v Ultimate Nutrition, Inc, 18 Sep 2013, OHIM GBoA, [59] (ULTIMATE NUTRITION could not be the basis for opposing ULTIMATE GREENS, when both were used for vitamins and nutritional supplements). See also Case R 1802/2012-1, Industrias Relax, S.A. V Relax Natürlich Wohnen GmbH, 5 Sep 2013, OHIM BoA, [30], [35]. (Consumers would perceive the common element RELAX as descriptive or purely promotional in the context of beds. Descriptive elements were to be accorded less importance in the overall impression produced by signs.) 206 Lifestyle Supplies (n 205). [61]–[62]. 207 For a recent example: Case R 2254/2017-4 Bekaertdeslee Innovation v Home Relax, 1 Aug 2018, EUIPO BoA, [47] (Differences between BIOCERAMICA F.I.R. figurative mark and BIO CERAMIC outweigh the similarity based on the non-distinctive word element). See also G. Humphreys, ‘A Selective Review of Some Recent Cases of the EUIPO Boards of Appeal: Practical Application of the Jurisprudential Criteria of the CJEU’ (2018) 40(8) European Intellectual Property Review 530, 536 (‘In many instances, the Boards have tried to maintain a more restrictive approach to finding a likelihood of confusion based on a purely descriptive element’).

198 Assessing Likelihood of Confusion which varies the scope of protection in accordance with the strength (distinctiveness) of the mark in both directions. However the elements of the multifactor confusion test seemingly diverge on this issue. Several decisions of the CJEU have confirmed that where the entire senior mark is weakly distinctive, or coincides with the junior mark only in terms of its weakly distinctive elements, this cannot rule out the likelihood of confusion. On the one hand, the court is clear that ‘the more distinctive the earlier mark, the greater will be the likelihood of confusion’.208 The rationale for this assumption has been extensively reviewed in Chapter 5, Section 2. Therefore the converse is also recognised; where the senior mark has weak distinctiveness, this is a relevant factor. However an analytical approach which prioritises weak distinctiveness ‘would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question’.209 ‘Such a result would not, however, be consistent with the very nature of the global appreciation which the competent authorities are required to undertake’.210 On the basis of this global appreciation, which includes the similarity of the marks based on their overall impression and the similarity of goods or services, a tribunal can legitimately conclude there is a likelihood of confusion. Thus while ‘it is true that the more distinctive the earlier mark the greater the likelihood of confusion will be, such a likelihood of confusion cannot, however, be precluded where the distinctive character of the earlier mark is weak’.211 As an illustration, the CJEU affirmed that a figurative CTM application for COMPRESSOR TECHNOLOGY in classes 7, 9, and 11 could be successfully opposed by prior national marks for KOMPRESSOR for various products in class 7, including vacuum cleaners, air conditioners and refrigerators, all of which contained air compressors.212 Concerns that prior mark owners would gain an overbroad legal monopoly over descriptive terms (or descriptive elements within a mark) were redirected towards absolute grounds for refusal—such marks should either not be registered or invalidated if they are, but while registered they would not be restricted to only a narrow scope of protection.213 208 SABEL (n 5), [24]; see also Canon (n 4), [18); Lloyd (n 55), [20]. 209 Case C-235/05 P L’Oréal SA (n 7), [45] (Application for FLEXI AIR for hair care products as a CTM successfully opposed on the basis of prior mark FLEX on similar goods, despite the weak distinctiveness of the common element FLEX). 210 Case C-171/06 P T.I.M.E. ART v OHIM (n 166), [41]. (Application for QUANTUM figurative CTM for watches and clocks in class 14 successfully opposed on the basis of prior French figurative mark QUANTIÈME in class 14, despite the weak distinctiveness of the earlier national mark). 211 Case C-190/15 P Fetim BV v OHIM EU:C:2015:778, [40] (Application for figurative CTM including the word elements ‘Solidfloor The professional’s choice’ for building materials successfully opposed on the basis of a prior UK figurative mark including the word elements ‘SOLID floor’ for solid wood flooring). 212 Case C-43/15 P BSH Bosch und Siemens Hausgeräte GmbH v EUIPO, LG Electronics Inc EU:C:2016:837 (Grand Chamber). 213 Ibid, [47]–[72]. However it should be recalled that acquired distinctiveness can allow even very descriptive marks or elements to overcome absolute grounds objections and enter the register. Identifying the appropriate scope of protection is therefore an unavoidable issue.

Other Factors 199 Stated succinctly, even descriptive or otherwise non-distinctive elements might be noticed by (some) consumers and this must be factored into global appreciation. The similarity of marks assessment is to be ‘objectively’ conducted and kept insulated from the distinctiveness question.214 The global appreciation approach to the similarity of marks therefore acknowledges that a weakly distinctive element can nevertheless be visually prominent because of its relative size or positioning, or otherwise dominant, by being in a different font or occupying the beginning of a word or phrase.215 This usually leads to visual and aural similarity, when the common word element is pronounced. In relation to conceptual similarity, several GC decisions indicate that having a descriptive element in common nevertheless satisfies this requirement. For those consumers who understand the descriptive nature of the common element, courts have concluded that it will link the marks in the minds of consumers rather than redirecting their attention towards a description of an attribute that is common across all such products.216 Somewhat unconvincingly, descriptiveness seems to enhance the similarity between marks at a very abstract level, rather than dispersing any similarity across all products which share the feature being alluded to. And not all consumers will understand descriptive connotations, especially insofar as EUTMs are concerned. While an element of an EUTM may be descriptive in several EU languages, it may not be in others and for the latter group of consumers, the common ‘descriptive’ element will be an unfamiliar, fanciful element that is found in both signs.217 For those who do not understand the common element, conceptual similarity is neutralised (both marks are in an unfamiliar language and thus equally whimsical). This allows visual and aural similarity to determine the outcome, even where the majority of EU languages would consider the common element to be descriptive. This will increase the probability of marks being similar and therefore the likelihood of confusion for those consumers. The CJEU’s reasoning summarised immediately above was fashioned in response to the particular features and vulnerabilities of the unitary EUTM. The undesirable consequence of this approach to global appreciation is to grant a broad legal monopoly to ‘weak’ marks, preventing others in the same product sector from accessing descriptive elements for their own marks. An opposing point of view exists within the EU and its 214 Case C-235/05 P L’Oréal SA (n 7), [42] (Distinctiveness cannot be incorporated at this stage since ‘it is not a factor which influences the perception which the consumer has of the similarity of the signs’). 215 Case T-134/06 Xentral v OHIM EU:T:2007:387, [54]; Case T-46/17 TDH Group v EUIPO, Comercial de Servicios Agrigan EU:T:2018:976 (PET CUISINE was the visually dominant common element where the products were foodstuffs for animals); Case T-448/16 Mr. Kebab s.r.o. v EUIPO, Mister Kebap SL EU:T:2017:459 (word elements visually dominant where ‘Mr Kebap’, a prior Spanish figurative mark, used to oppose figurative EUTM application for MR KEBAB); Case T-568/15 Giuseppe Morgese, Pasquale Morgese, Felice D’Onofrio v EUIPO EU:T:2017:78 (Star device common to both marks). 216 Case T-448/16 Mr. Kebab (n 215); Case T-225/15 QuaMa Quality Management GmbH v EUIPO, Microchip Technology, Inc EU:T:2017:10 (MEDIALB v MEDIALBO); Case T-745/14 TeamBank AG Nürnberg v EUIPO EU:T:2016:423 (Conflict between two figurative marks containing ‘Easy Credit’ for financial, insurance, and telecommunication services). 217 Max Planck Study (n 112) 148, at [3.83]; M. Mondolfo, ‘Slipping through our Fingers: How Weak Marks Turned Out to be Strongly Protected in the EU’ (ECTA Gazette, Nov2011). See also Case T-159/16 Metronia S.A. v EUIPO, Zitro EU:T:2017:340 (Hungarian, Bulgarian, and Polish-speaking public will not understand descriptive common element TRIPLE); Case T-210/14 Mederer GmbH v OHIM, Cadbury International Holdings EU:T:2016:105 (GUMMY/GUMMI when used on sweets and confectionaries would not be immediately descriptive to a Spanish-speaking public).

200 Assessing Likelihood of Confusion starting point is that the distinctiveness ratchet recognised in SABEL meaningfully operates in both directions: ‘the scope of protection of trade marks with low distinctive character will be narrower’.218 This approach emphasises different levers and options within the global appreciation test. It has been conveniently summarised in a Common Practice by the European Trade Mark and Design Network (TMDN).219 The proposal suggests in Objective 3 that when ‘marks share an element with a low degree of distinctiveness, the assessment of [confusion] will focus on the impact of the non-coinciding components on the overall impression of the marks. It will take into account the similarities/differences and distinctiveness of the non-coinciding components’ (emphasis added). Therefore a ‘coincidence in an element with a low degree of distinctiveness will not normally on its own lead to [confusion]’. However the likelihood of confusion is still possible where: • ‘the other components are of a lower (or equally low) degree of distinctiveness • or are of insignificant visual impact and the overall impression of the marks is similar • or the overall impression of the marks is highly similar or identical’.220 A similar approach is proposed for marks which share a component with no—as opposed to low—distinctiveness. Overall, this approach seeks to discount the significance of the overlapping yet non-distinctive elements and focuses on other elements of each mark. If these are sufficiently different, then confusion is unlikely. On occasion, the GC has indicated that where a descriptive element is common to both marks, ‘the conceptual similarity between the signs at issue does not have a great impact on the global assessment of the likelihood of confusion because the idea behind those signs is descriptive of some of the goods which they cover or of a characteristic of those goods. . . where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character’.221 Thus conceptual similarity based on a common descriptive element (i) does not count towards establishing the similarity of marks and (ii) also reduces the claimants’ chances within the third major stage of the test, that is when assessing globally whether there is a likelihood of confusion. For example, an application for a figurative EUTM including ‘MOUNTAIN CITRUS SPAIN’ could not be opposed on the basis of an earlier figurative EUTM incorporating ‘monteCitrus’ since the elements in common were descriptive of the type of goods concerned (citrus) and the geographical location where they are produced (elevated places).222 While reminding us of the first two limbs—similarity of marks and similarity of goods—as part of global appreciation, the CJEU has been silent on

218 EUIPO Guidelines (n 33), Chapter 1—General Principles, §3.3. 219 TMDN, Common Communication on the Common Practice of Relative Grounds of Refusal—Likelihood of Confusion (Impact of non-distinctive/weak components) CP5 (2 Oct 2014) (Hereafter TMDN CP5). 220 Ibid. 221 Case T-495/15 Sociedad agraria de transformación No.9982 (n 95). 222 Ibid, [50]–[54], [65]–[66].

Other Factors 201 the third: the likelihood of confusion itself. By contrast, national tribunals have been more forthcoming in factoring in descriptiveness under the third limb of assessment. The marks and goods may admittedly be similar but will these similarities combine to cause confusion? If there are alternative explanations for the similarity of marks, such as both sharing a descriptive element which relates to the underlying products, then confusion is unlikely.223 An illustration of this approach—acknowledging the weakness of common elements under the third limb of the test—is provided by Nicoventures.224 An application for a figurative mark incorporating ‘VAPE & Co’ for e-cigarettes and related retail services was opposed based on a prior registration for a figurative mark including ‘The Vape.Co’ for the same products. Birss J overruled the Registry Hearing Officer’s decision on the basis that the weak distinctiveness of VAPE for e-cigarettes had not been factored in to the analysis, which was an error of law. The nature of the common elements needs to be considered and in a case like this, in which the common elements are elements which themselves are descriptive and non-distinctive. . . it is necessary somewhere to focus on the impact of this aspect on the likelihood of confusion. As has been said already it does not preclude a likelihood of confusion but it does weigh against it. There may still be a likelihood of confusion having regard to the distinctiveness and visual impact of the other components and the overall impression but the matter needs to be addressed.225

Once the weakly distinctive nature was factored in, confusion became unlikely, especially given that consumers of such products were attentive. Though the marks had a high degree of visual, aural, and conceptual similarity, those similarities arose from the combination of common elements, namely the words ‘VAPE’ and ‘CO’. The stylised aspects of each mark such as the scripts and colouring were unremarkable, but they were enough to distinguish the marks.226 A related line of argument is that where the shared or similar element is descriptive or commonly used, attention shifts to the other elements of each mark. It should be recalled that the identification of distinctive and dominant elements within a complex or composite mark is a factual finding.227 A CTM application for TPG POST, for postal, telecommunications, and transportation products encountered an opposition based on earlier national and CTM word marks for POST and Deutsche Post on identical products. The GC was clear that while prior national marks must be presumed to 223 The BGH has been particularly clear that weak marks deserve a narrower scope of protection. See Southern Liqueur v O.M.I.H.B. (AMARULA) [2013] GRUR 631 (BGH); Ferdinand Erbgraf Zu Castell Castell v Castel Frères (CASTELL) [2013] GRUR 68 (BGH); Pjur Group Luxembourg [2012] GRUR 1040 (BGH). But cf J.M. v DGBB (DSA DEUTSCHE SPORTMANAGEMENTAKADEMIE) [2016] GRUR 283 (Junior mark has no distinctive element to act as a point of difference and will therefore infringe, notwithstanding the weak distinctiveness of the senior mark). 224 Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch). 225 Ibid, [31]. 226 Ibid, [33]–[37]. 227 See Chapter 3.

202 Assessing Likelihood of Confusion have a certain baseline of distinctiveness,228 that did not confer on such a prior (weak) mark ‘such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that [descriptive] element’.229 Therefore the visual and phonetic differences based on the initial element TPG carried the day.230 In the context of confectionaries including mints, word and figurative marks relating inter alia to PURE WHITE, PURE BREATH, and PURE FRESH could not be successfully used to oppose TRIDENT PURE.231 Since the PURE element was descriptive, TRIDENT was sufficiently distinctive and dominant to differentiate between the marks in question. In other situations, the junior mark’s sum may be greater than its parts, leading to a different overall impression. Thus POSTMODERN was held to be a play on words leading to such conceptual difference that it would not be confusingly similar to the prior mark POST, despite containing the latter.232 A third line of argument seeks to overtly link the manner in which a mark is characterised for the purposes of successfully navigating around absolute grounds objections at the time of registration and its subsequent scope for opposition or infringement actions. If a mark with a strongly descriptive component is only registered on the basis of its figurative ‘figleaf ’, to adopt Arnold J’s phrase, it is the figurative elements which should be considered distinctive and dominant—not just for establishing registrability but for infringement as well. In Bon Net, a CTM application for a figurative mark incorporating ‘Bon Appétit!’ was opposed on the basis of inter alia a prior Bulgarian figurative mark for Bon Apetí.233 Both were for class 29, which included meat, fish, poultry, and other foodstuff. The GC affirmed the EUIPO’s conclusion that the common word elements would be known by the relevant Bulgarian public as a commonly used expression (‘enjoy your meal!), the expression related to an enjoyable or good quality meal and was therefore descriptive for the underlying goods. Consequently the word elements could not dominate the mark. More specifically, the distinctive character of the prior mark was derived from its font and figurative elements.234 Therefore visual differences

228 The validity of prior national marks cannot be indirectly questioned on the basis that they are so weakly distinctive that should not have been registered in the first place: Case C-196/11 P Formula One Licensing BV v OHIM EU:C:2012:314. This decision has been critically assessed in Chapter 5, Section 4.2. 229 Case T-102/14 Deutsche Post AG v OHIM, PostNL Holding BV EU:T:2015:279, [43]; for similar outcomes, also: Case T-118/16 Deutsche Post v EUIPO, bpost NV EU:T:2018:86 (EUTM application for BEPOST unsuccessfully opposed); Case T-537/15 Deutsche Post AG v EUIPO, Verbis Alfa sp. z o.o. EU:T:2018:384 (EUTM application for InPost unsuccessfully opposed on the basis of prior marks for INFOPOST, ePOST, and POST). 230 Case T-102/14 Deutsche Post AG (n 229), [57], [61]–[64] (as part of the global assessment of the risk of confusion, the German public would associate POST in the mark applied for as a reference to postal services provided by TPG and not associate it with the applicant, since other economic operators also used POST for such services). 231 Case T-491/13 Perfetti Van Melle Benelux BV v OHIM, Intercontinental Great Brands LLC, EU:T:2015:979. 232 Case T-13/15 Deutsche Post AG v EUIPO, Media Logistik GmbH EU:T:2017:434. See also The Chancellor, Masters and Scholars of the University of Oxford v Fid Verlag Fachverlag Für Informationsdienste [2018] GRUR 79 (BGH) (OXFORD would not be confused with OXFORD CLUB since the latter would be considered as a composite phrase while the former did not have strong acquired distinctiveness in Germany); Imperial v Luigi Auletta Alta Moda, 31 May 2017, Italian Supreme Court (The word combination in the contested figurative sign IMPERO UOMO (literally, ‘empire man’ or ‘imperial man’) resulted in a conceptually different sign, which would not be confused with the weakly distinctive prior mark IMPERIAL, both for clothing). 233 Case T-485/14 Bon Net OOD v OHMI EU:T:2016:53. 234 Ibid, [40] (‘le caractère distinctif des marques antérieures et de la marque demandée tiendrait à leur écriture particulière ainsi qu’à leurs éléments figuratifs’).

Other Factors 203 between the two signs were sufficient to avoid confusion—the prior mark’s imagery included a steaming saucepan set against a red oval background, it had a specific font for ‘Bon Apetí’, and relied on a yellow and red colour scheme, while the mark being applied for included an exclamation mark, a sinuous font for the words, a blue background and evoked the French flag colours. Tailoring the scope of protection of the mark in accordance with the elements which are more distinctive is an approach which has found favour with UK IPO and the High Court.235 ‘If the only similarity between the trade mark and the sign complained of is a common element that is descriptive or otherwise of low distinctiveness, that points against there being a likelihood of confusion’.236 The connection between distinctiveness for the purposes of registrability and subsequently for scope has been reviewed in Chapter 5, Section 4. While acknowledging this connection, it has been explicitly noted: It is always important to bear in mind what it is about the earlier mark which gives it distinctive character. In particular, if distinctiveness is provided by an aspect of the mark which has no counterpart in the mark alleged to be confusingly similar, then the distinctiveness will not increase the likelihood of confusion at all. If anything it will reduce it.237

At the national level, tribunals are also more respectful of the consumers’ ability to discount the significance of a common descriptive or otherwise non-distinctive component. Where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.238

As a result, there seems to be a divergence between (i) the CJEU’s approach which tends to favour weak marks considered in an EUTM opposition context and (ii) the EUIPO, national registries as well as national courts, who are more sceptical and seek to narrow the scope of protection for such marks. 235 Whyte & Mackay (n 23) (Overruling the UK registry hearing officer, since the common element ORIGIN, in relation to use on wine and whisky, had low independent distinctiveness); Pia Hallstrom Ltd v Beale, Trade Marks Registry (Appointed Person), O/303/17. (Upholding the Hearing Officer, the common element PIA, as a name, had a very limited independent distinctive role). 236 W3 Ltd (n 177), [233]. 237 Kurt Geiger v A-List Corporate Ltd, Trade Marks Registry (Appointed Person), O/075/13, [39] (Iain Purvis QC). 238 The quote is from Lord Simmonds in an old passing off decision: Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd [1946] 63 RPC 39. It was cited with approval, as applicable to trade marks, in Elliott v LRC Products Ltd, Trade Marks Registry (Appointed Person), O/255/13, [57] (Daniel Alexander QC) (LOVE v LUV) (‘consumers are less likely to think that two descriptive marks denote businesses that are connected with one another, because a credible and dominant alternative explanation exists for the similarity in marks which has nothing to do with their denotation of a common trade source, namely that their similarity is attributable to their descriptiveness’).

7 The Timing of Confusion 1. Introduction 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’.1 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.2 Initial interest confusion is the more prominent of these two variants of the likelihood of confusion test. However its doctrinal position is presently unsettled, as evidenced by a sharp divergence of opinion between the UK High Court and Court of Appeal. There is no guidance from the Court of Justice of the European Union (CJEU) on this specific doctrine and it has not been addressed by courts in other European jurisdictions at the time of writing. Through an in-depth analysis of the existing decisions, the origins and present status of this doctrine in the UK are outlined in Section 2. Subsequently, Section 3 reviews the reasons why initial interest confusion has proved controversial. Its application raises both methodological issues (do we apply the conventional confusion test, or a variant?) as well as normative ones (will recognising such a claim inhibit competition by embracing tenuous forms of harm?). Given the very limited judicial consideration of this topic in the EU, comparative assistance is sought from US law. Section 4 reviews post-sale confusion, on which there is some guidance from the CJEU. Finally, Section 5 concludes by suggesting that the two types of actions

1 INTA, Report of the Online Use Subcommittee Concerning the Proposed Resolution on Initial Interest Confusion (18 Sep 2006) 1. See also P. O’Byrne and B. Allgrove, ‘Post-Sale Confusion’ (2007) 2 Journal of Intellectual Property Law & Practice 315, 316 (‘The English courts have traditionally interpreted the requirement for confusion in both trade mark infringement and passing off to mean that there must be confusion at the point of sale’). 2 As one of us has previously argued: I. Simon Fhima, ‘Initial Interest Confusion’ (2013) 8(4) Journal of Intellectual Property Law & Practice 311.

The Confusion Test in European Trade Mark Law. Ilanah Fhima and Dev S. Gangjee, Oxford University Press (2019). © Ilanah Fhima and Dev S. Gangjee 2019 DOI: 10.1093/oso/9780199674336.003.0007

Initial Interest Confusion in the UK 205 considered in this chapter may be more helpfully reconceived within the overarching notion of material or operative confusion.

2. Initial Interest Confusion in the UK 2.1 Definition The International Trademark Association (INTA) has summarised the US judicial approach to initial interest or pre-transaction confusion as a doctrine ‘which allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase’.3 The paradigmatic example of this is ‘bait and switch’ sales techniques. Here the advertising promotes one product in order to attract customers, when the trader actually intends to sell another product.4 Despite arising in the context of an online dispute, a US appellate court’s distinctly pre-digital hypothetical scenario conveys the underlying concern: Suppose [a video rental store named] West Coast’s competitor (let’s call it ‘Blockbuster’) puts up a billboard on a highway reading—‘West Coast Video: 2 miles ahead at Exit 7’ —where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast’s store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there.5

The INTA description was subsequently referenced by Arnold J (as he then was) in the prominent decision of Och-Ziff.6 However when identifying the test to be applied, the judge made no reference to any confusion being corrected prior to purchase. Based on the relevant legal provisions and authorities, he concluded that under European trade mark law, the creation of pre-purchase confusion ought to be actionable per se, regardless of any intervening clarification. In Och-Ziff, the court concluded that test for initial interest confusion would be satisfied in the following circumstances: [There is] confusion on the part of the public as to the trade origin of the goods or services in relation to which the impugned sign has been used arising from use of the 3 INTA Board Resolution, Initial Interest Confusion (18 September, 2006); available at: . 4 It is a blacklisted unfair practice under the UK Consumer Protection from Unfair Trading Regulations 2008, Schedule 1, Annexe Practice 6. 5 Brookfield Communications, Inc v West Coast Entertainment Corp, 174 F 3d 1036, 1064 (9th Cir 1999). 6 Och-Ziff Management Europe & Anor v OCH Capital LLP & Ors [2010] EWHC 2599 (Ch), [80] (Hereafter Och-Ziff).

206 The Timing of Confusion sign prior to purchase of those goods or services, and in particular confusion arising from use of the sign in advertising or promotional materials.7

According to this view, any likelihood of confusion prior to purchase is seemingly sufficient to impose liability, regardless of whether it subsequently dissipates before the purchase transaction. While the issue was decided in the context of the likelihood of confusion test contained in Article 9(1)(b) of the CTMR 2009 (Art 9(2)(b) of the EUTMR), the reasoning extends to the equivalent test in Article 5(1)(b) of the TMD 2008 (Art 10(2)(b) of the TMD 2015).

2.2 Status Prior to Och-Ziff Prior to Och-Ziff, initial interest confusion had been mentioned in passing by the High Court in L’Oréal v Bellure,8 which concerned the sale of inexpensive lookalike and ‘smellalike’ versions of the claimant’s high end perfumes. L’Oréal’s written submissions claimed that consumers would be initially attracted to the defendants’ products, thinking them to be the genuine luxury brands, even though this misapprehension would be corrected prior to sale. This was argued since conventional confusion was unlikely on the facts: the parties’ products sold at vastly different price points and through very different retail channels. However this argument was not substantiated at trial and the issue remained undecided. Subsequently, the doctrine was considered at greater length in Whirlpool v Kenwood,9 where it was argued that the claimant’s three-dimensional trade mark consisting of the shape of an artisanal food mixer was infringed by the shape of the defendant’s competing mixer. The Deputy Judge emphasised the potential breadth of ‘using in the course of trade’ found in Article 9(2) of the CTMR 1994, which described the range of commercial activities included within the ambit of infringement. Besides placing the mark directly upon the goods or their packaging, the phrase also covered situations where the defendant used an otherwise infringing sign on business papers and in advertising, offered goods for sale under the infringing mark, or stocked them for the purposes of putting them on the market. In principle, it was therefore sufficient for trade mark infringement liability to rest upon ‘ “a likelihood of confusion on the part of the public” at any material stage [of the purchasing process] or in relation to any material aspect of the commercialisation of the sign in question. From that. . . it follows that “bait and switch” selling can be prevented under Article 9(l)(b) [of the CTMR 1994] on the basis that the process of buying goods or services should, from selection through to purchase, be free of the

7 Ibid, [87] (emphasis added). 8 L’Oréal SA & Ors v Bellure NV & Ors [2006] EWHC 2355 (Ch), [191]–[192]. 9 Whirlpool Corporation & Ors v Kenwood Ltd [2008] EWHC 1930 (Ch) (Geoffrey Hobbs, QC).

Initial Interest Confusion in the UK 207 distorting effects of confusion’.10 However on the specific facts before the court, initial interest confusion could not be established. The third precursor is BP Amoco,11 where the defendant’s slightly darker shade of green, used on the exterior of their fuel service stations, was found to infringe BP’s registered colour marks for green, inter alia for service stations. While initial interest confusion is not expressly mentioned, the defendant’s adoption of the colour green could be characterised as an attempt at ‘bait and switch’. The Court of Appeal of Northern Ireland found that there was actionable confusion because at the point where motorists made the decision to turn off the road to buy petrol, the defendant’s own logos and trade name (TOP) could not be seen. Having turned off a highway, even if they saw the logo as they approached, drivers would most likely continue the manoeuvre and complete the purchase at the defendant’s petrol station. Thus, at the point of purchase there would be no confusion, but the sale would only take place as a consequence of the initial confusion. Despite BP Amoco being referenced in both Whirlpool and Och-Ziff as an authority for initial interest confusion, a different legal issue was debated in that case; namely, the extent to which the context of the defendant’s use and its own trade name TOP juxtaposed alongside the darker shade of green could be taken into account to counteract any possible confusion.12 Therefore prior to Och Ziff, there was limited precedent to draw upon.

2.3 Och-Ziff: Recognising Initial Interest Confusion The claimant in Och-Ziff was a reputed asset management group with registered EUTMs for OCH-ZIFF and OCH for fund management services. The first defendant, established by a Mr Ochocki, offered financial services under the name OCH CAPITAL. The signs and the services were both similar, but the defendant argued that the nature of the services was such than any confusion would be dispelled by the time that a potential client entered into a contract with it. Consumers of fund management services would pay careful attention during the investment process. This was accepted by Arnold J.13 However, the judge found that it did not preclude a finding of infringement under Article 9(1)(b) of the CTMR 2009, because the conventional likelihood of confusion test could accommodate initial interest confusion.

10 Ibid, [75]. Whether we should adopt such an idealistically high benchmark is debateable. Research on bounded rationality confirms that consumers often do not make purchasing decisions as purely rational actors. We have difficulty dealing with complex information and are prone to biases. Meanwhile the ‘average consumer’ construct is itself problematic because real world consumers vary significantly based on levels of pre-existing knowledge and involvement with products, as well as differences in personality and cultural conditioning. See B. Duivenvoorde, The Consumer Benchmarks in the Unfair Commercial Practices Directive (Springer, 2015) 159–175. 11 BP Amoco Plc v John Kelly Ltd [2002] FSR 5 (NICA). 12 Ibid, [59]–[61]. 13 Och-Ziff (n 6), [118]. However Arnold J also concluded that conventional likelihood of confusion was also established. Three instances of actual confusion were considered significant, although none were actual customers of financial services ([102]–[123]).

208 The Timing of Confusion More specifically, the claimant argued that an initial interest confusion claim could satisfy the criteria for the likelihood of confusion test contained in Article 9(1)(b), which states: A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade. . . any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark . . .

Given its origins in US trade mark law, Arnold J reviewed the leading US authorities, concluding that ‘the doctrine is increasingly accepted in US law, but remains both controversial in some quarters and uncertain as to its application and scope even where it is accepted’.14 He then set out the parameters of the doctrine in the EU context, which recognised liability based upon confusion ‘arising from use of the sign prior to purchase of those goods or services, and in particular confusion arising from use of the sign in advertising or promotional materials’.15 Drawing on the language of the relevant provisions, existing authorities, and first principles, the judge concluded that the doctrine was applicable in the context of Article 9(1)(b). As regards the relevant legislation, the language of Article 9(1)(b) of the CTMR 2009 does not appear to preclude initial interest confusion. Furthermore, Article 9(2)(d) expressly refers to a situation where ‘using the sign on business papers and in advertising’ may qualify as an infringing use. Arnold J therefore concluded that ‘there may be an infringing use of a sign even if there is no sale, in particular in an advertisement’.16 By eschewing any subsequent consideration of the harmful effects of an advertisement, this reasoning runs the risk of reshaping trade mark law into a paternalistic regime regulating all forms of misleading advertising; that too on the basis of speculative risks and probabilities. We therefore respectfully disagree with the breadth of this conclusion. In relation to the contexts of commercial use addressed by Article 9(2), there are at least three scenarios which should be distinguished: (i) advertising that is misleading and leads consumers to make unintended purchases. This is arguably the scenario envisaged by Article 9(2)(d). The misleading pre-sale information is actually material to purchasing decisions, or likely to be so; (ii) advertising which is potentially misleading for some consumers but corrected prior to a purchase. For instance, the advertiser may not have intended to deceive but unintentionally left out details, which are provided later in the transaction. If the intervening course correction preserves meaningful 14 Och-Ziff (n 6), [86]. The leading US authorities include: Grotian, Helfferich, Schulz, Th Steinweg Nachf v Steinway & Sons 523 F 2d 1331 (2d Cir 1975); Mobil Oil Corp v Pegasus Petroleum Corp 818 F 2d 254 (2d Cir 1987); and Brookfield (n 5). 15 Och-Ziff (n 6), [87]. 16 Och-Ziff (n 6), [101].

Initial Interest Confusion in the UK 209 consumer agency and choice (it’s not too difficult to change one’s mind), it should not be actionable under trade mark law; and (iii) despite any corrective dose of information, where the advertising nevertheless distorts consumer transactions, because the course correction or switching costs are high,17 the advertising may be infringing under trade mark law. Thus both (i) and (iii) ought to be prohibited, since they produce lasting distortions, but we suggest that (ii) ought not to be prohibited, because of the potential to inhibit otherwise lawful activities. In proscribing misleading advertising per se, Arnold J seems to have been legitimately concerned by the practice of bait and switch advertising, with intentional deception at its core. However the test adopted was overbroad and would prohibit a range of far less objectionable uses. In addition to the CTMR provisions, BP Amoco and Whirlpool v Kenwood—as described above—Arnold J also drew on three CJEU decisions. In O2,18 the relevant issue was whether the use by the defendant of a sign similar to the registered trade mark in a comparative advertisement could constitute infringement. As a threshold issue, the CJEU was asked to consider whether a defendant in a comparative advertisement makes relevant ‘use’ of the trade mark owners’ mark, since the defendant is not using the registered mark to indicate the commercial origin of the defendant’s products but instead using it to accurately identify the claimant’s own products. Here 3G was using bubbles similar to O2’s mark in a television advertisement in order to identify O2’s own telecommunications products, not its own. The CJEU confirmed that, in principle, ‘use’ in comparative advertising could nevertheless be infringing, since the advertiser was still using the claimant’s sign for the purpose of distinguishing its own products. In the specific factual context of O2, the referring national court had determined that viewers were unlikely to be confused by the comparative advertisement. It was ‘implicit, however, that, if the use of the sign in the context of the comparative advertisement had been confusing, then there would have been a likelihood of confusion’.19 According to Arnold J, O2 therefore stands for the proposition that confusion caused by unauthorised pre-sale use of a trade mark in advertising is sufficient for the purposes of trade mark infringement. While this conclusion is surely correct, it is incomplete. As the next section of this chapter elaborates, the EU’s consumer protection acquis requires that comparative advertising, which was at issue in O2, is actionably misleading only where it is material in that it impacts upon consumer decision making in a transactional context. Besides O2, Arnold J also relied on BergSpechte to establish that the act of advertising could itself trigger infringement.20 Here the CJEU controversially applied an approach to infringement that originated in the specific context of double identity infringement under Article 5(1)(a) of the TMD 1988, to Article 5(1)(b) which prohibits conventional

17 Also described as ‘when inertia may discourage changing in mid-stream’: Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230 (Ch), [132]–[135]. 18 Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd EU:C:2008:339. 19 Och-Ziff (n 6), [94]. 20 Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günther Guni and trekking.at Reisen GmbH EU:C:2010:163 (hereafter BergSpechte).

210 The Timing of Confusion likelihood of confusion.21 Bergspechte was one of a series of cases involving keyword advertising, where an unauthorised competitor bids for a trade mark, or a sign very similar to it, such that its own advertisement appears as a sponsored link in response to a keyword search based on the trade mark. For instance, if a Google user entered ‘Edi Koblmüller’—part of the claimant’s trade mark—as a search term, the competitor’s advertisement appeared as a sponsored link under the advertisement heading ‘Trekking- und Naturreisen’ (‘trekking and nature tours’). In Google France, the CJEU established that where bidding for such keywords prima facie involved the use of an identical sign in relation to identical products, the third substantive requirement for double identity proved crucial: were any of the functions of the trade mark harmed?22 The court concluded that an adverse effect upon the origin indicating function of a mark would be established where:

(i) Consumers could not determine whether the advertisement originated from the trade mark proprietor, or a party legitimately connected to it (such as a licensee or authorised re-seller) or an unauthorised third party (i.e. consumers were confused about commercial origin). (ii) Consumers could determine the correct provenance of the advertisement but ‘only with difficulty’.23 Significantly, Google France therefore established that an Internet keyword advertisement, which generated some ambiguity that might ultimately be dispelled ‘with difficulty’, could nevertheless be infringing under Article 5(1)(a) of the TMD 1988. In effect, either straight up confusion or increased cognitive processing effort—which might even be read as transient confusion—was deemed sufficient to jeopardise the origin function specifically in the context of double identity infringement and in relation to keywords. In BergSpechte, the CJEU transposed this ‘confusion or increased cognitive effort’ standard developed in Google France from Article 5(1)(a) to Article 5(1)(b), since the defendants were not using identical signs in this case and Article 5(1)(a) was unlikely to apply.24 The court presumably drew this analogy on the basis that both provisions exist to prevent harm to the origin-indicating function of a sign. However it did not address the fact that they do so in very different ways.25 The double identity rule in Article 5(1)(a) applies to a narrower range of situations involving identical marks and products, where 21 Double identity has been outlined in Chapter 1. It involves the defendant’s use of (i) an identical (or near- identical) sign; (ii) on identical goods or services, and (iii) which is likely to harm one of the functions of a trade mark, such as the essential or origin indicating function. 22 Joined Cases C-236/08 to C-238/08 Google France SARL v Louis Vuitton Malletier SA (CJEU) EU:C:2010:159, [49] and [75]–[99]. 23 Ibid, [83]–[84]. The CJEU also held that an advertisement which stopped short of being misleading but was inconclusively vague also impeded the origin function, resulting in double identity infringement ([89]–[90]). 24 BergSpechte (n 20), [35], [39]. 25 Cf. D. Ribbons, ‘What’s the Difference Between Article 5(1)(a) and 5(1)(b)? Not a Lot . . .’ (2011) 6(7) Journal of Intellectual Property Law & Practice 435. The two provisions differ primarily in terms of the burden of proof. For a detailed review, see Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch), [86]– [164] (Arnold J).

Initial Interest Confusion in the UK 211 it is easier to presume harm. Furthermore, specific policy drivers generate presumptions of harm in the keyword advertising context. Google France references EU initiatives directed specifically at improving the clarity and quality of Internet advertising.26 Nevertheless, in Portakabin, the CJEU confirmed that the ‘confusion or increased processing effort’ standard had been transposed from the double identity test to the likelihood of confusion test, at least for the purposes of Internet keyword advertising.27 Thus BergSpechte and Portkabin are not merely authorities for the proposition that advertising itself might trigger infringement. They lay the groundwork for claims that a more speculative, pro-claimant mode of analysis—initially fashioned within the confines of double identity—has migrated across to the conventional likelihood of confusion test. The final element worth mentioning—and one to which we return later in this chapter—is that Arnold J distinguished the seemingly contradictory approach taken by the CJEU in Ruiz-Picasso, where the court recognised the higher degree of attention attributable to consumers during a transactional process.28 To recapitulate, Arnold J relied upon the legislative wording of the likelihood of confusion test, judicial precedents, and arguments of principle to conclude that any consumer confusion generated during the course of advertising was infringing under Article 9(1)(b) of the CTMR 2009: ‘It again seems clear. . . that there can be a likelihood of confusion within the meaning of [Art 9(1)(b)] at the point when a consumer views an advertisement, whether or not the advertisement leads to a sale and whether or not the consumer remains confused at the time of any such sale’.29 Subsequently, the doctrine was relied upon in a handful of decisions, but usually as a supplementary argument.30

2.4 Interflora: Sounding the Retreat In Interflora the Court of Appeal signalled its unambiguous disapproval of initial interest confusion: In our judgment it is not helpful to seek to import the doctrine of initial interest confusion into EU trade mark law, at least so far as it applies to the use of a sign the same as or similar to a trade mark as a keyword in an internet referencing service, and it has the potential positively to mislead . . . 31 26 Google France (n 22), [86]–[87] (referring to EU legislation emphasising ‘the need for transparency in the display of advertisements on the internet’). 27 Case C-558/08 Portakabin Ltd v Primakabin BV EU:C:2010:416, [51]–[52]; relied upon by Arnold in Och-Ziff (n 6), [98]. 28 Case C-361/04 P Ruiz-Picasso v OHIM (CJEU) EU:C:2006:25; considered in Och-Ziff (n 6), [99]–[100]. 29 Och-Ziff (n 6), [97]. 30 Reviewed in Fhima, ‘Initial Interest Confusion’ (n 2). These include Fine & Country (n 17); Ghias (T/A Griller) v Ikram (T/A The Griller Original) & Ors [2012] EWPCC 3; British Sky Broadcasting Group Plc & Ors v Microsoft Corporation & Anor [2013] EWHC 1826 (Ch). See also Bayerische Motorenwerke AG v Ronayne T/A BMWcare [2013] IEHC 612; [2014] ETMR 29. 31 Interflora Inc & Anor v Marks and Spencer plc [2014] EWCA Civ 1403, [155] (hereafter, Interflora UKCA). For an overview of the other issues considered, see I. Fhima, ‘Court of Appeal Quashes Creative Interpretations of Article 5(1)(a) and Remits Interflora for Retrial’ (2015) 10(6) Journal of Intellectual Property Law & Practice 401.

212 The Timing of Confusion [And] In our view the doctrine of initial interest confusion is . . . an unnecessary and potentially misleading gloss on the tests the Court [of Justice] has articulated and we think it should perform no part of the analysis of our national courts in claims of the kind before us.32

These concerns arose based on the manner in which this doctrine was applied in the decision under appeal. The underlying fact pattern of this dispute is fairly representative of keyword advertising disputes prior to 2016.33 The defendant, Marks and Spencer (M&S), is a well- known retailer in the UK and has sold flowers since 1986. Over time, it entered the Internet flower delivery market but had never been a part of Interflora’s flower delivery network. M&S successfully bid for and obtained INTERFLORA and related terms as keywords. When an Internet searcher typed these terms into Google, a sponsored advertisement relating to M&S flower delivery services would appear in predetermined segments of the search results page. Interflora objected to this, claiming inter alia infringement of its registered mark for INTERFLORA. Before the High Court, Arnold J once again recognised the sufficiency of establishing initial interest confusion for infringement purposes but—unlike Och-Ziff—this time in the context of double identity under Article 5(1)(a) (Art 9(1)(a) of the CTMR 1994).34 Expert analysis of website traffic data indicated that ‘consumers who searched for Interflora, clicked on an advertisement and then visited the M & S website were an order of magnitude more likely to visit Interflora’s website after visiting the M & S website than the average visitor to the flowers section of the M & S website’.35 The judge concluded that this web browsing behaviour suggested that consumers had clicked on M&S’ sponsored advertisement assuming that M&S was part of Interflora’s network. Upon arriving at the M&S flower delivery service pages, these consumers realised their error when there was no reference to Interflora and continued their journey to the official Interflora website. This initial interest confusion—despite taking only a few clicks to rectify—was sufficient to establish detriment to the origin-indicating function of a mark. In turn, this constituted an independent and sufficient basis for establishing double identity infringement.36 On appeal, M&S argued that recognising such a low-threshold trigger for double identity infringement would prove nigh-impossible to rebut. Arnold J had concluded 32 Ibid, [158]. 33 In 2016, Google made a global change to its keyword advertising policy and removed the list of sponsored links on the right hand side of its search results page, making the disputes in this chapter emblematic of a bygone age. 34 Interflora Inc & Anor v Marks and Spencer Plc & Anor [2013] EWHC 1291 (Ch), [301]–[306] (hereafter, Interflora Ch). 35 Ibid, [304]. On the possible legal implications of such click-through behaviour, see D. J. Franklyn and D. A. Hyman, ‘Trademarks as Search Engine Keywords: Much Ado about Something?’ (2013) 26(2) Harvard Journal of Law & Technology 482; A. Blythe, ‘Confusion Online: Does the Test for Trade Mark Confusion on the Internet Differ from that Applied to Infringement in Other Spheres?’ (2014) 36(9) European Intellectual Property Review 563, 564. 36 It should be noted that Arnold J concluded that double identity infringement was also satisfied on the basis of other evidence and arguments.

Initial Interest Confusion in the UK 213 that temporary detours by Internet searchers en route to the Interflora website counted as meaningful harm to the origin-indicating function of a mark, thereby satisfying the rebuttable presumption of harm required by double identity infringement. M&S would have the onus of proving, inter alia, ‘the absence of any real risk of initial interest confusion as to the origin of its goods and services on the part of any significant proportion’ of the relevant public.37 In effect, it would have to guarantee that its online advertisements would avoid even initial interest confusion, let alone lasting confusion. The Court of Appeal was troubled by the implications of recognising such a form of confusion, ‘at least so far as it applies to the use of a sign the same as or similar to a trade mark as a keyword in an internet referencing service’.38 It therefore found the doctrine of initial interest confusion to be unhelpful for the following reasons. First, in Google France, BergSpechte, and Portakabin the CJEU had already set out— in clear and unambiguous terms—the criteria for assessing whether the unauthorised use of a trade mark as a keyword has an adverse effect on its origin function, in relation to both double identity and likelihood of confusion tests. ‘In either case it must be shown that the advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the trade mark proprietor or an undertaking economically connected to it or, on the contrary, originate from a third party’.39 Second, these criteria were ‘formulated by the Court with great care and reflect the importance of trade marks in developing a system of undistorted competition whilst recognising that their purpose is not to protect their proprietors against fair competition’.40 The court has recognised that keyword advertising is not inherently objectionable since it has the potential to offer consumers competitive alternatives and substitutes. Therefore the CJEU’s infringement tests incorporate appropriate checks and balances.41 In particular, for infringement the perspective adopted is that of the average consumer,42 who is reasonably observant and circumspect. For the Court of Appeal, the relevant question was whether ‘the advertiser has enabled that average consumer to ascertain the origin of the advertised goods or services and so make an informed decision. We would emphasise it is not the duty of such advertisers to avoid confusion’.43 This is a point worth emphasising— initial interest confusion risks changing the nature of the duty imposed upon third party advertisers, in a manner which would greatly increase the burden upon them.

37 Interflora UKCA (n 31), [63]. 38 Ibid, [155]. 39 Ibid. 40 Ibid, [156]. 41 For the argument that checks and balances may nevertheless be developed around initial interest confusion, as part of the global appreciation test, see A. Blythe, ‘Initial Interest Confusion: Attempting to Define its Current Status within European Trade Mark Law’ (2016) 38(4) European Intellectual Property Review 201, 205. 42 Ibid, [107]–[130] (elaborating upon the qualities of this hypothetical subject of the law). 43 Ibid, [156] (emphasis in the original).

214 The Timing of Confusion Third, the Court of Appeal reiterated that initial interest confusion remains highly controversial in the USA.44 It applies to a range of fact patterns involving the use of an identical or similar sign in advertising: [From], at one end of the spectrum, initial attraction of consumers based upon some kind of association of advertised goods or services with those of the trade mark proprietor or even mere diversion, to, at the other end of the spectrum, initial confusion which gives rise to a real risk that consumers will actually buy the advertised goods or services even though they know they are not the goods or services of the trade mark proprietor.45

It was not clear that activities towards the former end of the spectrum should be prohibited, since diverting customers via legitimate advertising is well within the parameters of healthy marketplace competition. The doctrine, as adopted by Arnold J, did not incorporate the necessary checks and balances. The Court of Appeal concluded that this doctrine ‘should perform no part of the analysis of our national courts in claims of the kind. . . [and the judge] was therefore wrong to approach the matter as he did’.46 While it is clear that the Court of Appeal does not favour this transatlantic transplant, the door may not be entirely closed. This doctrine was clearly repudiated in the context of Internet keyword advertising disputes and in relation to both double identity as well as likelihood of confusion claims, each of which seeks to preserve a trade mark’s origin indicating function. It is possible that a UK tribunal might seek to revive initial interest confusion outside of the keyword advertising context, although early indications do not suggest this is likely.47 Nevertheless, anticipating such a possibility, the following section identifies the arguments ranged against any attempted resuscitation.

44 To the extent that a US appellate court recently reversed one of its own decisions. It initially held that a search for Multi Time Machine (MTM) watches on the online marketplace Amazon, which generated a results list of comparable and clearly labelled military-style watches produced by other competitors, would be infringing in the absence of explicit disclaimers that Amazon did not stock MTM watches. This finding, based on initial interest confusion, was subsequently reversed on the ground that no reasonably prudent consumer accustomed to shopping online would likely be confused by the Amazon search results. See Multi Time Machine v Amazon.com 804 F.3d 930 (9th Cir 2015), superseding 792 F.3d 1070 (9th Cir 2015); Cf. A. M. Hall, ‘Standing the Test of Time: Likelihood of Confusion in Multi Time Machine v. Amazon’ (2016) 31 Berkeley Technology Law Journal 815 (2016) (Arguing that Amazon could have nevertheless done more to protect smaller businesses such as MTM, via unambiguous labelling of its search results, on the market morality grounds). 45 Multi Time Machine (n 44), [157]. 46 Ibid, [158]. 47 The UK Trade Marks Registry has endorsed the Court of Appeals’ critical approach in non-keyword contexts. See, e.g., Dreams Ltd v Pure Imports Ltd, Trade Marks Registry (Appointed Person), O/3 07/5 , [53]–[54] (Casting doubt on the continued applicability of this doctrine post Interflora UKCA (n 31)); Oney Bank v Onesavings Bank plc, Trade Marks Registry, O/0 65/1 8, [73] (The Hearing Officer did ‘not agree [with the opponent] that the US doctrine of “initial interest confusion” is the correct test under section 5(2)(b)’).

The Case Against Initial Interest Confusion 215

3. The Case Against Initial Interest Confusion Our daily lives are replete with instances of transient confusion and uncertainty; we fumble for house keys and forget names. The behavioural and now cognitive sciences have convincingly exposed the extent to which the rationality presumed by classical law and economics is bounded and circumscribed in specific decision-making contexts.48 With consumers in mind, the ‘language of science allows human foibles that everyone has experienced to become part of the conversation about the law’.49 This body of empirical evidence might be read as reinforcing the need for a doctrine of initial interest confusion. However the Court of Justice initially evoked the notion of the average consumer, who is deemed to be ‘reasonably well-informed and reasonably observant and circumspect’50 to counteract excessive paternalism and even protectionism that might otherwise present barriers to the free movement of goods within the (then) European Communities. Alongside the principle of mutual recognition, the provision of information, via adequate labelling, was considered sufficient to overcome objections that (say) pasta produced in one EU Member State did not meet the standards of another Member State and could not be called pasta in that member. This would impede the signalling of competitive substitutability. The foundational pillar of the free movement of goods could only be derogated from to the extent that any derogation was proportionate to the risk that consumers would be misled.51 Only those labelling practices which generated serious risks would be proscribed. The average consumer was therefore developed as a reasonably astute and observant hypothetical vantage point from which to assess the provision of information to customers. Consumers were deemed to be intelligent enough to process labelling information, thereby allowing them to distinguish between products and—in turn—allowing those products to flow freely across national borders within the internal market. Labelling which clearly indicated differences between products was considered an effective compromise between the conflicting pressures of preventing deception and permitting the free movement of goods. Thus from inception, this consumer was a hypothetical and objectively defined vantage point, presumed to be reasonably careful and attentive.52 From a trade mark law perspective, for such a notional consumer it is less likely that transient confusion will result in material harm. Furthermore, the extent to which any type of confusion is harmful,53 which forms of confusion ought to be 48 For a literature review, see C. Jolls, ‘Behavioral Law and Economics’, in P. Diamond and H. Vartiainen (eds), Behavioral Economics and Its Applications (Princeton University Press, 2007) 115. 49 G. Helleringer and A-L. Sibony, ‘European Consumer Protection through the Behavioral Lens’ (2017) 23 Columbia Journal of European Law 607, 610. 50 Case C-210/96 Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt EU:C:1998:369, [37]. 51 J. Davis, ‘Locating the Average Consumer: His Judicial Origins, Intellectual Influences and Current Role in European Trade Mark Law’ [2005] Intellectual Property Quarterly 183, 197–198. 52 R. Incardona and C. Poncibo, ‘The Average Consumer, the Unfair Commercial Practices Directive, and the Cognitive Revolution’ (2007) 30 Journal of Consumer Policy 21; G. B. Dinwoodie and D. S. Gangjee, ‘The Image of the Consumer in European Trade Mark Law’ in D. Leczykiewicz and S. Weatherill (eds), The Image(s) of the Consumer in EU Law (Hart, 2016). 53 A. C. Yen, ‘The Constructive Role of Confusion in Trade Mark’ (2014–15) 93 North Carolina Law Review 77.

216 The Timing of Confusion material or relevant54 and the other values eclipsed by an over-emphasis on transient confusion need to be added to the scales.55 There are additional and compelling arguments favouring the Court of Appeal’s characterisation in Interflora of initial interest confusion as an ‘unwelcome gloss’.

3.1 Policy Arguments What would be the consequences of recognising a doctrine of initial interest confusion? The central concern is that the doctrine threatens to grant trade mark owners excessive editorial authority; unauthorised uses which could—within the realms of possibility—risk creating transient ambiguity for an unspecified number of consumers would become actionable. However certain unauthorised uses by third parties are desirable and legitimate.56 The US experience with initial interest confusion is instructive in this regard, especially as regards trade marks on the Internet, as noted by a leading commentator: More problematically, the. . . doctrine has been used as a content regulation tool to shut down websites that the trademark owner does not like, such as parody websites, gripe websites, websites marketing gray market goods, websites publishing information about used equipment dealers, websites publishing information relevant to [searchers’] inquiries [such as information relevant to a category of product], websites providing conference attendees with a directory of resources for their trip, and websites advertising a provider of post-sale equipment servicing. Normally, trademark law should not interfere with these socially beneficial trademark uses. . . Trademark law should not deplete the social discourse of valuable content, yet [initial interest confusion] has emerged as a tool to do just that.57

The danger is that any unauthorised use provides the opportunity to argue that some consumers may temporarily and erroneously believe that use to be authorised. A slippery slope emerges, whereby all unauthorised uses are considered suspect. The Court of Appeal responded to this concern by underlining the CJEU’s recognition that keyword advertising was potentially useful, even though it involved unauthorised use of a trade mark. This practice could enhance meaningful consumer choice by presenting search 54 M. A. Lemley and M. McKenna, ‘Irrelevant Confusion’ (2010) 62 Stanford Law Review 413; W. McGeveran and M. P. McKenna, ‘Confusion Isn’t Everything’ (2013) 89 Notre Dame Law Review 253; R. Tushnet, ‘What’s the Harm of Trade Mark Infringement’ (2015) 49 Akron Law Review 627. 55 For a survey of arguments against trade mark overprotection, see A. Martineau, ‘Imagined Consumers: How Judicial Assumptions about the American Consumer Impact Trademark Rights, for Better and for Worse’ (2012) 22 DePaul Journal of Art, Technology & Intellectual Property Law 337. 56 Joined Cases C-236/08 to C-238/08 Google France SARL v Louis Vuitton Malletier SA (AGO) EU:C:2009:569, [110]–[112] and [123] (AG Poires Maduro refers to unauthorised-yet-legitimate online product reviews, price comparisons, or sales of second-hand goods which require the use of trade marks). 57 E. Goldman, ‘Deregulating Relevancy in Internet Trademark Law’ (2005) 54 Emory Law Journal 507, 574 (internal citations omitted).

The Case Against Initial Interest Confusion 217 engine users with competitive substitutes or complementary products.58 Imposing a duty on advertisers to prevent any confusion was too high a price to pay. Trade mark law would move from being a pro-competitive regulatory tool, facilitating consumer choice, to one which unreasonably restricted competition. Once adopted, this doctrine would have implications for several categories of trade mark infringement claims. For instance, initial interest confusion can significantly inhibit the practice of lookalike or ‘me-too’ product marketing. This is a contentious field of marketing, prominently involving supermarket own-brand or ‘lookalike’ packaging, where the supermarket designs its own brands—cereals and shampoos are perennial favourites—to match the look-and-feel (i.e. colour, shape, and design features) of the market leaders.59 Brand owners argue that amidst crowded supermarket shelves shoppers make quick decisions based on visual cues, resulting in an appreciable number of mistaken purchases.60 Proponents of lookalike packaging counter this by arguing that objective and highly relevant information—such as the lower price of the lookalike and its spatial positioning on separate shelves—greatly reduces the scope for confusion while customers are offered meaningful substitutes which can compete on quality. Once a product’s trade dress is registered as a trade mark, it would be far easier to argue that similarities in packaging which generate even initial interest—approaching a shelf and picking up the lookalike product—qualify as infringement. However many products appear similar when viewed from afar and some US courts have been hesitant to extend initial interest confusion into the trade dress domain.61

3.2 Doctrinal Arguments 3.2.1 The Architecture of the Confusion Test Initial interest confusion also appears as an outlier within the present architecture of the likelihood of confusion test. The point of sale or, more accurately, a transactional context, is the presumed backdrop for the various limbs of the likelihood of confusion test. To begin with, the transactional context lets tribunals imagine the average consumer response more effectively. It provides a steer in relation to consumer perception, sophistication, and expectations. When comparing two marks or signs, a tribunal is required to evaluate their visual, aural (or phonetic), and conceptual similarity.62 58 Interflora UKCA (n 31), [155]–[158]. 59 Hogan Lovells, Final Report on Parasitic Copying for the European Commission (MARKT/2010/20/D) (2012); P. Johnson, J. Gibson, and J. Freeman, The Impact of Lookalikes: Similar Packaging and Fast-Moving Consumer Goods (UK Intellectual Property Office Report, 2013/18). 60 T. Holmes, Para-Sight: A Study of Erroneous Decision Making in the Presence of Copycat Packaging v1.2 (Acuity Intelligence; 25 July 2017) (study funded by GlaxoSmithKline and the British Brands Groups (BBG)). Several BBG studies and reports on lookalike packaging can be found here: . 61 Gibson Guitar Corp v Paul Reed Smith Guitars, LP 423 F.3d 539, 76 U.S.P.Q.2d 1372 (6th Cir 2005), cert. denied, 126 S. Ct. 2355 (US 2006) (finding no infringement of the registered mark in the shape of a Les Paul single cutaway guitar). But cf. adidas-America, Inc v Payless Shoesource, Inc, 546 F. Supp. 2d 1029 (D. Or. 2008), which resulted in the highest jury award ever given to a claimant inter alia on the basis that Payless’ four striped shoe would create initial interest confusion and attract consumers into its stores. The amount awarded was subsequently reduced. See D. R. Gerhardt, ‘Lexmark and the Death of Initial Interest Confusion’ (2014) 7 Landslide 22, 27. 62 See Chapter 2.

218 The Timing of Confusion Depending on the channels of trade and point of sale, the visual similarity of a sign may be given additional significance. As an example, the CJEU has affirmed that consumers purchasing olive oil from the shelves of a supermarket are likely to prioritise the visual elements of composite marks.63 By contrast, when assessing marks for alcoholic beverages it should be borne in mind that these products ‘were likely to be purchased orally in restaurants, pubs, bars, nightclubs and discotheques, that is to say, places that tend to be noisy’, whereupon phonetic similarity should be prioritised.64 These are but two examples of the significance of channels of trade and the transactional context in determining the hierarchy of visual, aural, or phonetic significance when assessing the similarity of marks. Common channels of trade or a point of sale are once again relevant when assessing the similarity of goods or services.65 For instance, the General Court (GC) concluded that washing machines specifically for cattle milking machines were similar to the milking machines themselves because inter alia they shared channels of trade and points of sale.66 Besides assessing the similarity of marks or goods, the transactional context is especially relevant when considering the average consumer’s level of attention. While members of the public encounter trade marks across a wide range of circumstances beyond the transactional context—such as pre-purchase advertising and when the product is being consumed or used afterwards—it is during the transactional process or ‘decision to purchase’, when making a ‘choice between different products in the category concerned that the average consumer exhibits the highest level of attention’.67 The CJEU considered the link between consumer attentiveness and transactional contexts in Ruiz-Picasso,68 which involved an opposition to the application for PICARO as an EUTM in relation to motor vehicles in class 12, on the basis of a prior registration PICASSO, also for motor vehicles in the same class. It was successfully argued inter alia that, for motor vehicles, due to ‘their price and their highly technological character, the average consumer displays a particularly high level of attention at the time of purchase of such goods’.69 This greater attentiveness at the time of purchase made confusion less likely, notwithstanding the similarity of marks and goods. The opponent had argued that ‘the owner of a trade mark must be protected against any confusion both before and after purchase’.70 This would require a tribunal to consider the perception of the relevant public beyond the point of sale, such as when the relevant public saw the vehicles in question passing by on the street. In a non-transaction context the degree of attention would invariably be lower, paving the way for either initial interest or post-sale confusion.

63 Case C-498/07 P Aceites del Sur-Coosur SA v Koipe Corporación SL, OHIM EU:C:2009:503, [65]–[75]. 64 Case T-15/17 Dimitrios Mitrakos v EUIPO EU:T:2018:198, [53]. 65 See Chapter 4, Section 6.7. 66 Case T-74/10 Flaco-Geräte GmbH v OHIM EU:T:2011:207, [41]. 67 Case C-24/05 P, August Storck v OHIM EU:C:2006:421, [70]–[72] (whether a shape mark had acquired sufficient distinctiveness to be registered on the basis of inter alia its use in a transactional context). 68 Ruiz-Picasso (CJEU) (n 28). 69 Ibid, [39]. 70 Ibid, [34]–[35] and Case C-361/04 P Ruiz-Picasso v OHIM (AGO) EU:C:2005:531, [50].

The Case Against Initial Interest Confusion 219 By contrast, EUIPO was prepared to consider the attention of consumers in certain post-sale contexts (e.g., when purchasing goods where the packaging persisted) as a relevant factor but argued that in general, ‘consumer interest should be gauged at the moment of opting for a particular product’.71 The CJEU endorsed this by adopting the following reasoning: (i) the level of attention for the average consumer would vary depending on the category of goods or services in question; (ii) for products such as motor vehicles, objectively characterised as expensive and technical, a higher degree of attention at the time of purchase can be presumed; (iii) this factual presumption ‘may reduce the likelihood of confusion between marks relating to such goods at the crucial moment when the choice between those goods and marks is made’; (iv) the mere possibility of a lower degree of attention in non-purchase contexts does not prevent the higher degree of attention in the transactional context from being taken into account; and (v) while there will inevitably be low-attentiveness contexts where the public will encounter trade marks, this should not set the threshold, especially when attention levels vary for that product (seeing vehicles on the road versus actively considering purchasing them).72 Therefore low-attentiveness contexts may be relevant—and will certainly favour initial interest confusion claims—but cannot be set as the benchmark for likely consumer perception, at the cost of disregarding higher-attentiveness (transactional) contexts. The reasoning in Ruiz-Picasso was subsequently endorsed by Advocate General Kokott, in the context of identifying the relevant public from whose perspective confusion is to be judged.73 The ‘Court of Justice [in Ruiz-Picasso] regarded the moment when the choice between the goods and marks is made as crucial for assessing the likelihood of confusion. . . Other points in time, at which confusion on the part of consumers might be more likely because they display a lesser level of attention, are by contrast of secondary importance’.74 Advocate General Colomer also emphasised the significance of the moment when a transactional choice is made between goods bearing trade marks, as the context for determining the degree of care exercised by the relevant public.75 However the court in Och-Ziff favoured a more restrictive reading of Ruiz- Picasso: ‘that the average consumer of vehicles would exhibit a high level of attention’ and the CJEU otherwise did ‘not address initial interest confusion’.76 However 71 Ibid, [AG51]. 72 Ibid, [38]–[43]. The CJEU also clarified (at [44]–[48]) that Case C-206/01 Arsenal Football Club v Reed EU:C:2002:651 did not establish a general rule that the particular high level of attention in a transactional context should be ignored. 73 Case C-412/05 P Alcon Inc v OHIM (AGO) EU:C:2006:687 (AG Kokott). For the AG, the relevant public for medicinal products available only on prescription was to be determined by reference to healthcare professionals and not patients, since the former are responsible for making the choice to prescribe a specific brand of medication. However the CJEU (EU:C:2007:252, [57]–[63]) broadened this public out to include the perception of end- consumers, who would actually be making purchases at pharmacies. 74 Alcon v OHIM (AGO) (n 73), [51]. 75 Case C-495/07 Silberquelle GmbH v Maselli Strickmode GmbH (AGO) EU:C:2008:633 (AG Colomer), [40] (The ‘likelihood of confusion only arises where a consumer discovers similar marks at the crucial moment when he chooses between goods and their marks’). 76 Och-Ziff (n 6), [99]–[100].

220 The Timing of Confusion Ruiz-Picasso has more to offer. The objective characteristics of the relevant goods or services and consequently the manner in which they were approached in a transactional context will influence the degree of attention to be attributed to the average consumer. The perception of those contemplating the marks as consumers should have the greatest weight. Elsewhere in Och-Ziff, the judge relied on the evidence of (actual) transient confusion on the part of three witnesses, two of whom knew the trade mark owner. The defendant had argued that none of these witnesses was, at the relevant point of time, a consumer of the financial services or investment services that were germane in this dispute, while actual consumers of such services are attentive and careful.77 This was rejected on the basis that there was ‘nothing to suggest that [the three witnesses] reacted in a different way to the manner in which a UK consumer of investment services who was aware of the reputation of the trade mark would react’.78 However the degree of care they exhibited was clearly very different from the formal presumptions made about consumer sophistication for financial services. While there was evidence of actual (transient) confusion this could be attributed to the fact that each witness had engaged with the defendant’s advertising sign in much the same manner as someone might engage with a vehicular trade mark on the road; with a decidedly lower degree of attention than a transactional context would demand. Actual-yet-transient confusion, based upon the lower degree of attention in a non-transactional threshold, will always favour a claimant. Yet a licence to cherry-pick contexts, by including less attentive observers, was rejected in Ruiz-Picasso. It is one thing to say that the likelihood of confusion test possesses the flexibility to accommodate consumer perception outside of the point of sale, provided any (mis)perception is likely to influence future transactional decisions.79 It is entirely another to allow non-transactional perception—and accompanying levels of inattentiveness—to drive the outcome of this test. Or in the words of the GC, ‘to require. . . that account be taken of the lowest degree of attention which the public is capable of displaying when faced with a product and a mark would amount to denying all relevance, for the purpose of an assessment of the likelihood of confusion, to the criterion relating to the variable level of attention according to the category of goods’.80 77 Ibid, [116]. 78 Ibid. 79 The GC has been willing to consider how the sign might be perceived beyond the point of sale, provided this is likely to have a meaningful impact on future transactional decisions: Case T-445/12 Koscher + Würtz v OHIM EU:T:2014:829, [79]–[81] (While the relevant public were medical professionals and deemed to be attentive, orders for medical instruments could be placed on the phone or the quality of the instruments could be discussed amongst professionals, whereupon confusing aural similarity would be significant); see also Case T-369/14 Sequoia Capital operations v OHIM, Sequoia Capital, EU:T:2015:733, [22] and [44]–[45] (in the context of venture capital and investment advisory services). 80 Case T-169/14 Ferring BV v OHIM, Kora Corp. EU:T:2015:280, [34]. See also Case T-486/07 Ford Motor Company v OHIM EU:T:2011:104, [46] (Where ‘the objective characteristics of a given product mean that the average consumer purchases it only after a particularly careful examination. . . [this] may reduce the likelihood of confusion between marks relating to such goods at the crucial moment when the choice between those goods and marks is made’).

The Case Against Initial Interest Confusion 221 3.2.2 Materiality of Harm As we have seen above, a transactional context is presumed for several elements of the likelihood of confusion test. It is the framework within which consumer reactions to likelihood of confusion claims are assessed. The reason for this arguably relates to materiality, or the extent to which the confusion is likely to affect decision making resulting in a recognised form of harm.81 Economic or reputational harm is most likely to flow when erroneous information skews a transactional decision.82 Precisely such a distorting effect is required in the case of ‘blurring’ or detriment to distinctive character, which is another form of infringement in EU trade mark law.83 The CJEU has described this form of non-confusing yet harmful mental association between a reputed senior and junior mark as follows:84 [D]‌etriment [by blurring] is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.

In addition to proving a mental link between the senior and junior user’s marks, the CJEU has clarified that demonstrating detriment to the distinctive character of the earlier mark ‘requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future’.85 Where any initial confusion experienced by some consumers can be effectively remedied such that their agency—and capacity to choose in particular—is meaningfully preserved, this suggests that no recognisable harm should result. In focusing only on initial interest confusion and ignoring any intervening corrective measures, Och-Ziff proposed a test which overlooks materiality. This contrasts with the position under 81 Several US scholars have emphasised this requirement: Lemley and McKenna, ‘Irrelevant Confusion’ (n 54); R. G. Bone, ‘Taking the Confusion Out of “Likelihood of Confusion”: Toward A More Sensible Approach to Trademark Infringement’ (2012) 106 Northwestern University Law Review 1307, 1310 (‘There is no good reason to prevent consumer confusion when it causes very little harm and involves no morally blameworthy conduct’); R. Tushnet, ‘Running the Gamut from A to B: Federal Trademark and False Advertising Law’ (2011) 159 University of Pennsylvania Law Review 1305, 1352–73 (drawing parallels with the materiality requirement in the law of false advertising); M. B. Kugler, ‘The Materiality of Sponsorship Confusion’ (2017) 50 University of California Davis Law Review 1911. 82 As some US courts have recognised: Astra Pharm Prods, Inc v Beckman Instruments, Inc 718 F.2d 1201, 1206– 08 (1st Cir 1983) (finding that infringement liability requires confusion influencing ‘the ultimate decision of a purchaser whether to buy a particular product’); 83 Fhima (n 2) 315. For further details on blurring see, I. Simon Fhima, Trade Mark Dilution in Europe and the United States (OUP, 2011) Ch 4; D. Bereskin (ed.), International Trade Mark Dilution (Thomson West, 2017) 84 Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd EU:C:2008:655, [29]. Another widely used point of reference is Frank Schechter’s conception of blurring as ‘the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods’: F. I. Schechter, ‘The Rational Basis of Trade Mark Protection’ (1927) 40 Harvard Law Review 813, 825. 85 Intel (n 84), [77].

222 The Timing of Confusion two cognate bodies of law, European consumer protection legislation and the tort of passing off, to which we now turn. The decision in Och-Ziff was premised upon confusing advertising being actionable per se under EU trade mark law. Yet the EU’s consumer protection acquis requires that comparative advertising, which was at issue in O2, is actionably misleading where it is material in that it impacts upon consumer decision making in a transactional context. Here the Misleading and Comparative Advertising Directive (MCAD),86 whose predecessor was central to O2, is instructive. Under the MCAD, for advertising to be misleading it must be likely to produce a material impact upon consumer economic behaviour, by distorting purchasing decisions or otherwise harming the complainant. According to the definition in Article 2(b) of the MCAD, misleading advertising ‘means any advertising which in any way, including its presentation, deceives or is likely to deceive the persons to whom it is addressed or whom it reaches and which, by reason of its deceptive nature, is likely to affect their economic behaviour or which, for those reasons, injures or is likely to injure a competitor’. When interpreting this provision, the CJEU has confirmed the importance of proving either that the advertisement at issue is likely to affect the consumer’s economic behaviour, or results in harm to an ‘innocent’ competitor as a result of the advertisement.87 In Carrefour Hypermarchés,88 the court considered the interaction between misleading practices proscribed by the MCAD and misleading omissions prohibited by the Unfair Commercial Practices Directive (UCPD).89 Advocate General Saugmandsgaard Øe was unequivocal as regards the materiality requirement: [Whether] comparative advertising is misleading within the meaning of Article 4(a) of [the MCAD] depends, first, on its capacity to deceive a consumer, whether by act or by omission, and, secondly, on its capacity to affect a consumer’s economic behaviour, in particular by affecting his transactional decision, or to injure a competitor. Comparative advertising is also misleading within the meaning of that article, if the advertiser omits material information. . . provided that that omission is likely to cause the average consumer to take a transactional decision that he would not have taken otherwise.90 86 Directive 2006/114/EC of 12 December 2006 concerning misleading and comparative advertising (repealing Directive 97/55/EC) [2006] OJ L 376/21. 87 Case C-159/09 Lidl SNC v Vierzon Distribution SA (AGO) EU:C:2010:499, [AG55] (referring to materiality this as one of ‘two essential elements’; this could either manifest as an effect on the economic behaviour on the public to whom the advertising is addressed, or alternatively as harm to the competitor targeted by the advertisement). The CJEU also acknowledged materiality as one of the alternative requirements (EU:C:2010:696, [44] and [55]). 88 Case C-562/15 Carrefour Hypermarchés SAS v ITM Alimentaire International SASU (CJEU) EU:C:2017:95. 89 Directive of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to- consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC, and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council [2005] OJ 2005 L149/22 (hereafter, UCPD). 90 Case C-562/15 Carrefour Hypermarchés SAS v ITM Alimentaire International SASU (AGO) EU:C:2016:781, [38] (internal citations omitted). The decision to enter a shop based on misleading advertising would fall within the scope of a ‘transactional decision’, which encompassed more than the actual product purchase decision ([44], n 28). The CJEU also referred to advertising being ‘liable to influence the economic behaviour of the consumer by causing him to take a decision in the mistaken belief ’ that the price differential presented in the advertisement was objectively calculated (EU:C:2017:95, [33], emphasis added).

The Case Against Initial Interest Confusion 223 Thus EU consumer protection law—which is primarily concerned with protecting consumer interests as opposed to allocating property rights—requires that misleading advertising is likely to influence consumer decision making and ultimately affect their transactional behaviour. A bait and switch advertising gambit, where the ‘switching back’ or rectification costs are high for consumers (I’m here now so I may as well buy something I didn’t originally want) is likely to distort transactional decision making or commercially harm the innocent trader who is targeted. As an intentionally harmful misrepresentation, this sales technique is also blacklisted as an unfair practice under Annexe 1, paragraph 6 of the EU UCPD.91 Recognising initial interest confusion, without any meaningful materiality enquiry, is a questionable expansion that extends beyond EU consumer protection law. Trade mark law should not be more solicitous of consumer interests than the consumer protection acquis, especially since its primary purpose is to allocate proprietary entitlements in signs. In a similar vein, the tort of passing off requires that the actionable misrepresentation causes or is likely to cause damage. Passing off is described as ‘the law of unregistered trade marks’.92 It ‘can be summarised in one short general proposition—no man may pass off his goods as those of another’.93 A successful claim requires the ‘classical trinity’ of elements to be established: (1) goodwill that is protected against (2) a misrepresentation which (3) causes actual damage, or potentially might do so.94 Importantly, the three requirements are interconnected. In the past, some judicial authorities had left the door open for suggesting that transient confusion may be actionable under passing off95 and the court in Och-Ziff presumed the likelihood of ensuing damage such that passing off was established.96 However more recent passing off decisions emphasise the materiality of the misrepresentation; does it move the public to nevertheless buy the defendant’s goods? Transient confusion is unlikely to cause damage, unless it takes the form of bait and switch where switching costs are high, or else it causes lasting reputational harm.97 The leading treatise on passing off confirms that Och-Ziff should not be ‘taken as standing for the proposition that “initial interest confusion” in the trade mark sense is sufficient for passing off. The relevant criterion is not confusion in some 91 Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market [2005] OJ L149/22. 92 J. Davis, ‘Unfair Competition: The United Kingdom’ in F. Henning-Bodewig (ed.), International Handbook on Unfair Competition (Hart, 2013) 600, 600. 93 Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491, 499 (Lord Oliver). 94 Ibid; See also Warnink (Erven) BV v Townend and Sons Ltd [1979] AC 731 (HL) (‘Advocaat’) for a more elaborate version of the test. 95 Knight v Beyond Properties Pty Ltd [2007] EWHC 1251 (Ch), [80]; Neutrogena Corporation and Anr v Golden Limited and Anr [1996] RPC 473, 497 and 504 (the Court of Appeal was prepared to accept evidence of initial confusion that was remedied before sale as indicative of damage); Fine & Country (n 17), [90]–[91]. 96 Och-Ziff (n 6), [155]–[160]. 97 HFC Bank Plc v Midland Bank Plc [2000] FSR 176, 182 (‘Mere confusion between two traders’ products [in the absence of goodwill that might suffer harm] does not provide the basis for a passing off action’); Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC), [17]–[28] (initial interest confusion which is dispelled and does not result in damage will not qualify as passing off); Argos Ltd v Argos Systems Ltd [2017] EWHC 231 (Ch), [350] (initial interest confusion inconclusively argued under passing off); Pepsico, Inc v Teng Yun International Pte Ltd Trade Marks Registry, O/134/18, [60]–[61]; Martinez (t/a Prick) v Prick Me Baby One More Time Ltd [2018] EWHC 776 (IPEC), [23] (‘Mere confusion on the part of consumers, if it does not impel customers to do business, is not enough’).

224 The Timing of Confusion abstract sense, but misrepresentation, and the misrepresentation must be a material one, in the sense of being really likely to cause damage’.98 Materiality therefore matters across trade mark law, consumer protection law, and the tort of passing off. 3.2.3 Changing the Standard While the facts of Och-Ziff indicated actual, albeit transient, confusion on the part of the three witnesses who gave evidence, initial interest confusion can logically operate on the basis of a likelihood as well. Thus establishing the likelihood or risk of transient confusion could suffice. Making hypothetical estimates about the risk of transient confusion—in the absence of any actual evidence—realigns the likelihood of confusion test, moving it closer to a ‘wonderment’ or ‘cause to wonder’ standard.99 There need not be a risk that consumers will be (positively) confused about either the origin of a product or whether there is some commercial affiliation between the junior or senior user. If there is a risk that consumers might merely wonder about a commercial connection or some form of sponsorship—even temporarily—this could be repackaged as transient confusion.100 However someone who wonders about a state of affairs is aware that there are multiple possible answers or explanations. Uncertainty about source is not the same as confusion in relation to source or sponsorship, as a UK trade mark registry Hearing Officer recently confirmed, when confronted with an initial interest confusion claim: There is, however, a difference between a proposition being more than fanciful and it being likely or there being a serious risk of it happening. I accept that a section of the relevant public will be caused to wonder whether or not BEAUTYBAY might somehow be connected with EBAY, but this is not the same as indirect confusion (or initial interest confusion). This occurs when the average consumer is confused into believing that there is likely to be an economic connection between the users of the earlier and later marks. Merely being given cause to wonder whether there might be a connection between the users of two recognisably different marks does not amount to a likelihood of indirect confusion.101

98 C. Wadlow, The Law of Passing Off: Unfair Competition by Misrepresentation, (5th edn, Sweet & Maxwell, 2016), [5–182]. 99 This standard was previously found in s11 of the UK Trade Marks Act of 1938 and is presently found inter alia in s 43 of the Australian Trade Marks Act 1995 (trade marks likely to deceive or cause confusion). It’s formulation is traced to Kitto J in Southern Cross (1954) 91 CLR 592, 596 (‘[I]‌t is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt’). On the difference between mere wonderment and material confusion, see Bing! Software v Bing Technologies and Another [2009] FCAFC 131 (Federal Court of Australia). 100 The CJEU may have inadvertently adopted the wonderment standard for the purposes of harm to the origin function under double identity infringement, in Google France (n 22), [90]. Double identity infringement is satisfied if a keyword ad doesn’t directly and incorrectly suggest an economic link between the two parties but is merely vague, to the extent that reasonably attentive average consumers are unable to determine whether or not the two parties are commercially related. BergSpechte (n 20) is even more problematic, since it transposes this uncertainty standard—at least for keywords—from double identity to the likelihood of confusion context. 101 eBay, Inc v Dotcom Retail Ltd, Trade Marks Registry, O/347/14, [82].

The Case Against Initial Interest Confusion 225 The ‘likelihood’ of initial interest confusion also relaxes the threshold conditions for infringement in a manner which is antagonistic to Marca Mode,102 where the CJEU was asked to interpret the likelihood of association standard and its relationship with the likelihood of confusion. More specifically, the court was asked whether a likelihood of association (in the form of a mental connection between the two signs) coupled with the inability to rule out confusion, due to the distinctive character of the senior mark, would satisfy the likelihood of confusion test under Article 5(1)(b) of the TMD 1988. The Advocate General articulated a series of arguments of ‘principle which make it undesirable to give a broad interpretation to the concept of confusion’, including restrictions on the free flow of goods and services which would hinder the operation of the internal market and the ability of prior national marks to more easily oppose EUTM applications.103 The CJEU was also clear that on the basis of the question referred, ‘a likelihood of confusion cannot be presumed’ to flow from the likelihood of association and it would have to be established.104 Introducing a likelihood of initial interest confusion test would significantly lower the standard for establishing confusion, with detrimental consequences. 3.2.4 Recognising Claims Under a Different Heading An action against initial interest confusion is on its strongest footing when addressing bait and switch advertising, which is universally condemned. Despite the underlying fact pattern of Och-Ziff being unrelated to bait and switch advertising (the defendant’s sign was based upon the use of his own name and the services offered were not in competition), this undesirable practice was referenced by Arnold J at various points.105 If an intentional misrepresentation, which is ineffectively countered prior to purchase such that it nevertheless distorts transactional behaviour, is the real concern then more targeted solutions remain available. To begin with, there is the EU’s consumer protection acquis, referenced earlier in this chapter.106 Bait and switch advertising which misleadingly entices a consumer to enter into a shop will fall within the ambit of the MCAD as well as the UCPD. Additionally, there is considerable consensus that initial interest confusion responds to similar fact patterns and concerns that a free riding or misappropriation claim is designed to respond to.107 An intentional misrepresentation which distorts transactional behaviour would certainly satisfy the ‘unfairness’ criterion for such a claim. The wrongful diversion of attention which characterises bait and switch may find a more hospitable reception—at least for the sufficiently reputed marks likely 102 Case C-425/98 Marca Mode CV v Adidas AG (CJEU) EU:C:2000:339. 103 Case C-425/98 Marca Mode CV v Adidas AG (AGO) EU:C:2000:56, [32]–[37] (AG Jacobs). 104 Ibid, [33] and [38]–[39]. 105 Och-Ziff (n 6), [82], [88], [90]. 106 Section C(2)(ii). 107 P. Gillieron, ‘Online Advertising Business Models and Distinctive Signs –Should One Rethink the Concept of Confusion?’ (2008) 39 IIC 688, 704–706; Fhima, ‘Initial Interest Confusion’ (n 2) 317; F. R. Scholl, ‘Abandoning Consumer Confusion in Keyword Advertising Trademark Infringement Cases: Proposal for a Modified Dilution Analysis’ (2012–2013) 17 Intellectual Property Law Bulletin 47, 51; P. F. Rush, ‘Clearing Up the Confusion: Aiding Court Decisions Regarding Trademark Infringement and the Internet’ (2013–2014) 43 Stetson Law Review 637, 657; Blythe, ‘Initial Interest’ (n 41) 205–06.

226 The Timing of Confusion to be used as bait—when reconceived as an unfair advantage claim under Articles 5(3)(a) or 10(2)(c) of the TMD 2015 (Arts 8(5) or 9(2)(c) of the EUTMR).108

4. Post-Sale Confusion Post-sale confusion was recognised by the High Court in Datacard as an independent cause of action, while being described as ‘confusion on the part of . . . the public as to the trade origin of goods or services in relation to which the impugned sign has been used which only arises after the goods or services have been purchased’.109 Noting that such confusion had been extensively considered by US courts and recognised in other EU members, Arnold J (as he then was) concluded that ‘in appropriate circumstances post-sale confusion can be relied upon as demonstrating the existence of a likelihood of confusion’ under Article 5(1)(b) of the TMD 2008.110 The claimant DataCard was a leading supplier of card printers and related products used to print on articles such as passports and driving licences. Its desktop card printers and ribbons were sold under a range of trade marks accompanied by the main house mark DATACARD. The defendant Eagle sold card printers produced by several different manufacturers, including DataCard. Eagle also sold printer ribbons compatible with DataCard printers but manufactured by unauthorised third parties. The claimant complained of Eagle’s use of DATACARD on its own and related websites, on emails generated by its website and on labels applied to third party ribbon packaging. The judge drew on three decisions of the Court of Justice, which provided indirect support for this conclusion. First, in Arsenal111 the CJEU had to consider whether the defendant’s disclaimer at the point of sale would be sufficient to ward off any confusion, such that purchasers were unlikely to mistake the defendant’s unauthorised products for official football club merchandise. It should be clarified that the arguments were made in the context of double identity infringement under Article 5(1)(a) of the TMD 2008. The court confirmed that the use of ‘Arsenal’ in such circumstances was not purely descriptive use; for instance, for describing the club or its activities. When seen upon merchandise such as scarves, hats, and shirts, ‘Arsenal’ was likely to be read as a trade mark. Consequently, having ‘regard to the presentation of the word “Arsenal” on the goods at issue. . . and the other secondary markings on them. . . the use of that sign is such as to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark proprietor’.112 The disclaimer at the 108 The extent to which such claims overlap with tarnishment or unfair advantage claims are explored in A. Kur and M. Senftleben, European Trade Mark Law: A Commentary (OUP, 2017) 321–30. 109 Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [277] (emphasis in the original). For an analysis of cases receptive to post-sale arguments under the Trade Marks Act 1938, see O’Byrne and Allgrove, ‘Post-Sale Confusion’ (n 1); for its emergence and application in the USA, see D. M. Tichane, ‘The Maturing Trademark Doctrine of Post-Sales Confusion’ (1995) 85 The Trademark Reporter 399. See also P. Sean Morris, ‘Guess What Gucci? Post-Sale Confusion Exists in Europe’ (2012) 47 Valparaiso University Law Review 1. 110 Datacard (n 109), [289]. 111 Arsenal v Reed (n 72). 112 Ibid, [56].

Post-Sale Confusion 227 point of sale, indicating that ‘Arsenal’ or any accompanying logos were used solely to adorn the product (signalling loyalty to the team), and did not indicate any affiliation with official Arsenal merchandise, would not be sufficient to counteract this impression of a material link since the defendant’s merchandise might be subsequently encountered in the wild, as it were. In other words, some ‘consumers’—and the court very specifically uses this term—might in future think that the unofficial merchandise was in fact official, without the benefit of the disclaimer. This could jeopardise the origin and quality indicating functions of a trade mark, thereby satisfying the conditions for double identity infringement. The CJEU was therefore willing to recognise consumer responses downstream from or subsequent to the point of sale. However this was primarily for the purpose of assessing how consumers would read a sign. Would they interpret the use of ‘Arsenal’ on items of clothing merely as a badge of loyalty, to indicate support for the football team, or would they instead read it as a trade mark, indicating the party ultimately responsible for the commercial origin and quality of the product? As Arnold J summarised it, the CJEU appeared ‘to acknowledge the relevance of post- sale confusion when considering the impact of the use of the sign (which is not, of course, the same thing as requiring a likelihood of confusion)’.113 In the second decision Arnold J relied upon, the CJEU engages in a similar reasoning process. In Anheuser-Busch,114 the CJEU had to determine the circumstances under which the use of a trade name (‘Budweiser Budvar’) might infringe a trade mark (BUDWEISER). A preliminary issue was whether the defendant’s use of its trade name was the type of use which fell within the scope of the trade mark infringement provisions and double identity in particular. The CJEU reiterated that any use which was likely to harm one of the functions of a trade mark would fall within the scope of the infringement provisions. This would potentially be the case where the defendant’s use suggested a material link in trade with the claimant: ‘It must be established whether the consumers targeted, including those who are confronted with the goods after they have left the third party’s point of sale, are likely to interpret the sign, as it is used by the third party, as designating or tending to designate the undertaking from which the third party’s goods originate’.115 It should be noted that once again the CJEU uses the expression ‘consumers’—that is to say, those making a purchasing decision—and its reasoning is yet again applicable to the context of double identity infringement. Finally, Ruiz-Picasso116 was considered relevant in relation to the degree of attention attributable to relevant consumers. As Arnold J summarised it: [What the CJEU] was saying is that, when assessing whether there is a likelihood of confusion, it is not necessary to take into account the fact that there may be circumstances in which the average consumer displays a rather lower level of attention than he or she 113 Datacard (n 109), [280]. 114 Case C-245/02 Anheuser-Busch Inc v Budĕjovický Budvar np EU:C:2004:717. 115 Ibid, [60] (emphasis added). However where the defendant in fact used the sign ‘other than to distinguish the goods concerned—for example, as a trade or company name’ there would be no infringement under the harmonised EU trade mark regime, although national liability rules might still operate. Ibid, [64]. 116 Ruiz-Picasso (n 28).

228 The Timing of Confusion normally does when choosing between goods of that type. As for the decision in Arsenal, all the Court was saying was that this did not support the contrary point of view [i.e. that less-attentive contexts should drive the outcome of the confusion analysis].117

The High Court concluded that the CJEU endorsed the (then) Court of First Instance (CFI)’s reasoning that ‘the question of the degree of attention of the relevant public to be taken into account for assessing the likelihood of confusion is different from the question whether circumstances subsequent to the purchase situation may be relevant for assessing whether there has been a breach of trade mark rights’.118 The two questions may be analytically distinct but are inevitably related. Post-sale encounters with the product are relevant for assessing likelihood of confusion, but how are we to characterise the post-sale audience in such situations? US courts have referred to ‘potential customers’, the ‘purchasing public’, and even the ‘viewing public’.119 This third category should give us pause. Scholars have also pointed out the crucial difference between mere observers and potential purchasers.120 ‘Individuals who may be confused post-sale are not necessarily looking to buy a particular good. They may just be observing someone or something out in the world’.121 By contrast, in both Arsenal and Anheuser-Busch, the CJEU indicated that consumer reaction was relevant in a post- sale context. The question thus far evaded is this: for trade mark law purposes, when can someone be reasonably classified as a consumer, in terms of their cognitive investment and engagement? Stated differently, is it fair to say that anyone who comes across a car or fashionable garment on the street is evaluating it in consumer mode?122 In Ruiz-Picasso, the CJEU confirmed that the CFI was fully entitled to reject the argument that the reaction of anyone who sees a car on the street is to be given the same weight as a purchaser in a car showroom. We are clearly not always in consumer mode. So precisely when—in a post-sale context—have we entered into the transactional decision making phase? A better way of framing the issue might be: when does so called post-sale confusion effectively translate into material pre-sale confusion, likely to distort a transactional decision in the future? While acknowledging that there may be some post-sales circumstances where confusion may be relevant, the UK trade mark registry has rejected arguments that mere ‘cursory contact’ with the disputed sign in a public place would 117 Datacard (n 109), [284]. 118 Ibid, [285] (referencing Ruiz-Picasso (CJEU) (n 28), [48]). 119 O’Byrne and Allgrove, ‘Post-Sale Confusion’ (n 1) 320. 120 K. Raustiala and C. J. Sprigman, ‘Rethinking Post-Sale Confusion’ (2018) 108 The Trademark Reporter 881, 883. 121 Ibid, 884. 122 A transactional decision can extend across time and space but depends upon a causal chain to give it coherence. This has been confirmed in the context of EU consumer protection law. The CJEU held that a misleading advertisement which was viewed at home and led to a wasted supermarket trip, since the advertised item was not stocked, would fall within the scope of such a decision: Case C-281/12 Trento Sviluppo srl, Centrale Adriatica Soc. coop. arl v Autorità Garante della Concorrenza e del Mercato EU:C:2013:859. However we are not always in transactional mode and the CJEU recognised only causally relevant preparatory acts linked to the main transaction. Thus a transactional decision would be one ‘taken by a consumer concerning whether, how and on what terms to purchase. . . That concept therefore covers not only the decision whether or not to purchase a product, but also the decision directly related to that decision, in particular the decision to enter the shop’ (Ibid, [35]–[36]).

Post-Sale Confusion 229 suffice. Cursory contact might set an individual upon the path towards purchasing the product in the future, but at that future juncture ‘the ordinary considerations regarding likelihood of confusion during the purchasing process will come into play’.123 In the context of assessing the similarity of gin label trade marks, an EUIPO Board of Appeal has also suggested that the (anecdotal) risk of post-sale confusion in a noisy and dimly lit bar is not sufficient; instead ‘the assessment [of the possibility of confusion] must be based on the prognosis of a situation where the purchase is made or the decision to purchase the goods is prepared’.124 If it were otherwise, post-sale confusion based on the low attentiveness of a mere casual observer would become an independently sufficient basis for establishing the likelihood of confusion. The Payless litigation in the USA highlights the very significant consequences which flow from adopting post-sale confusion as a stand-alone basis for infringement. Adidas successfully argued that US retailer Payless wilfully infringed its registered 3-stripe trade mark and various Adidas product designs, by selling sports shoes with two and four stripes. Hundreds of millions of dollars were awarded to the claimant Adidas when absolutely no confusion at the point of sale could be established, as the claimant itself acknowledged.125 It is important to identify these concerns because courts in EU Member States have recognised post-sale confusion in recent years.126 However this is often in the context of copycat products (evocative imitations) or direct replicas of luxury goods. In such situations defendants tend to argue that differences in the channels of trade (market stalls versus exclusive distribution networks), prominent disclaimers, the use of a different trade mark and very significant price differences combine to ward off confusion at the point of sale. Intentional misappropriation as well as a potential loss of control over the branding message—including the dilution of connotations of luxury and exclusivity— are major concerns. However these are entirely separate causes of action under EU trade mark law.127 Claims better articulated as unfair advantage (free riding), detriment to repute (tarnishment), or detriment to distinctiveness (blurring) are covertly repackaged as speculative consumer confusion, without satisfying any of the accompanying threshold requirements for these causes of action. While one can understand why brand owners seek to assert control in such situations, some have critiqued the move to draw on trade mark rules in order to recreate a form of sumptuary law where the 123 DKH Retail Ltd v Nadeem Anwar, Trade Marks Registry, O/522/17, [33]. 124 R 2133/2017-4, Robert Birnecker v Fisher’s Gin Ltd, 3 Apr 2018, EUIPO BoA, [7]‌, [24] (citing Ruiz-Picasso (CJEU) (n 28)). 125 adidas-America (n 61). The initial jury award of over $300 million was subsequently reduced to $65 million. A more circumspect approach has been adopted by the 9th Circuit. See Adidas America, Inc v Skechers USA, Inc, No. 16-35204, U.S. App. LEXIS 12249 (9th Cir 2018). For helpful background as well as a critique of whether post- sale confusion exists at all and is harmful, see Raustiala and Sprigman, ‘Rethinking’ (n 120). 126 See, e.g., Tchibo/Rolex [1985] GRUR 876 (BGH); Tchibo/Rolex II [1993] GRUR 55 (BGH) (replica Rolex watches); Cartier International v. I. Negif, Rome court of first instance, 22 May 2017 (unreported) (replica Cartier watches); F. S. and X. W. v Salvatore Ferragamo, Milan court of first instance, 12 July 2017 (unreported) (replica shoes incorporating Ferragamo’s 3D buckle mark). 127 Art 10(2)(c), TMD 2015; Art 9(2)(c) EUTMR. This has been previously noted by others as well. See C. D. Powell, ‘We All Know It’s a Knock-Off! Re-evaluating the Need for the Post-Sale Confusion Doctrine in Trademark Law’ (2012) 14 North Carolina Journal of Law & Technology 1, 10–13; J. Sheff, ‘Misappropriation- Based Trademark Liability in Comparative Perspective’ in J. Ginsburg and I. Calboli (eds), Cambridge Handbook on Comparative and International Trademark Law (CUP, 2019) (Forthcoming).

230 The Timing of Confusion risk of deception is otherwise low.128 This ensures that socially expressive consumption is regulated and social hierarchies are maintained. Only the ‘right sort’ of consumers should be allowed to associate themselves—via conspicuous consumption—with reputed brands, thereby preserving their rarity and distinction.

5. Conclusion: Material or Operative Confusion In advocating a cautious approach to both initial interest and post-sale confusion, we do not suggest that consumer responses beyond the point of sale should be irrelevant. Where confusion beyond the point of sale influences a subsequent transactional decision—or is meaningfully likely to do so—it should be recognised within the likelihood of confusion test. In causally linking confusion to the ultimate distortion of transactional decisions, we favour material or operative confusion. This confusion might originate via uses outside of the point of sale but should nevertheless materially influence consumer decision making. To base infringement solely upon initial interest or post-sale confusion goes too far. This expansion bypasses several of the assumptions about consumer perceptions in relation to channels of trade that are built in to the three main limbs of the likelihood of confusion test. For instance, the products in question shape presumed consumer perceptions and levels of attention—consumers purchasing a car in a showroom will be far more careful than the general public on the street. As the keyword case law indicates, this expansion also risks shifting the burden of proof onto competitors and third parties, compelling them to prove that consumers are unlikely to be confused. Finally, the expansion may have its roots in the grievance that unauthorised third party uses will cause detriment to distinctiveness, detriment to repute, or take unfair advantage. Yet these are distinct causes of action with their own threshold requirements. As labels go, material or operative confusion would better reflect the need for limits being set around the recognition of confusion in a pre or post purchase setting.

128 B. Beebe, ‘Intellectual Property Law and the Sumptuary Code’ (2010) 123 Harvard Law Review 1, 41–3; J. Sheff, ‘Veblen Brands’ (2012) 96 Minnesota Law Review 769. See generally, Y. J. Han, J. C. Nunes, and X. Drèze, ‘Signaling Status with Luxury Goods: The Role of Brand Prominence’ (2010) 74(4) Journal of Marketing 15.

8 Non-Traditional Marks and the Likelihood of Confusion 1. Introduction 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? Tribunals across the EU have begun to apply—and adapt, where necessary—familiar elements of the likelihood of confusion analysis to such situations. With only limited guidance from the Court of Justice of the European Union (CJEU), a range of approaches have emerged and reviewing them is instructive. While there is an emerging consensus on certain issues, the divergences are especially illuminating, since they provide a menu of options for both litigants and adjudicators. Non-traditional marks include visually perceptible signs as well as those perceived by the remaining senses.1 Drawing on registry-level approaches to classification for guidance, visual signs now extend to (i) three-dimensional marks, including product shape and external packaging; (ii) colour marks, which refer to single colours without contours, or combinations of such abstract colours; (iii) holograms, which optically store and retrieve an image in three dimensions; (iv) motion marks, where the moving image may be depicted via a short video clip or sequence of still images (including so- called gesture marks and fluid marks); (v) multimedia signs which include sound in

1 These categories are derived from: WIPO, New Types of Marks, 1 Sep 2006 (SCT/16/2); the International Trademark Association (INTA) resources on such marks, available at ; the EUIPO classification of mark categories on eSearch plus, its search tool for accessing trade mark records in its databases, available at ; and the classification on TMView, a global trade mark search tool providing data from a wide range of participating intellectual property offices, available at . The Confusion Test in European Trade Mark Law. Ilanah Fhima and Dev S. Gangjee, Oxford University Press (2019). © Ilanah Fhima and Dev S. Gangjee 2019 DOI: 10.1093/oso/9780199674336.003.0008

232 Non-Traditional Marks and the Likelihood of Confusion addition to visuals; and (vi) position marks, where a sign appears at a specific location on a product. Marks that are perceived by the other senses predictably cover (vii) sound marks, both musical and non-musical; (viii) olfactory or scent marks; (ix) gustatory or taste marks; and (x) tactile marks. It should be noted that this is not a closed list and other categories will emerge over time. To date, non-traditional marks have occupied only a modest amount of space on trade mark registers. 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.2 Such a relatively modest presence holds true for other jurisdictions, including the USA, Singapore, Japan, and Australia.3 However non-traditional mark applications in the EU—and three-dimensional marks in particular—are on the rise.4 Pathways to registration are also more clearly defined than was previously the case. Revised guidelines have been issued in relation to satisfying registration requirements, including representation on the register, for various categories of EUTMs such as three-dimensional shapes, position marks, patterns, colours, sounds, and motion as well as multimedia marks.5 Finally, non-traditional marks are perceived to have considerable marketing potential. There is consensus that ‘multisensory attributes of the packaging undoubtedly constitute a key element in the success of many, if not all, mass market food and beverage products’.6 Advertisers value the aesthetics, emotions, and experiences that can be mobilised by such marks. Consumers’ attention, expectations, and purchase decisions can all be influenced by visually attractive packaging, colours, and fragrances.7 Perhaps 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 the face of plain packaging initiatives designed to exclude their use from tobacco products.8 While their marketing potential has commercial significance, non-traditional marks also generate unease, due to the potential anti-competitive effects associated with 2 SSC009—Statistics of European Union Trade Marks (07 Aug 2018), available at: . 3 See K. L. Port, ‘On Nontraditional Trademarks’ (2011) 38 Northern Kentucky Law Review 1; M. Adams and A. Scardamaglia, ‘Non-Traditional Marks: An Empirical Study’ in I. Calboli and M. Senftleben (eds), Protecting Non- Traditional Marks: Critical Perspectives (OUP, 2018) 37. 4 M. Adams and A. Scardamaglia, ‘Non-Traditional Trade Marks in Europe: An Historical Snapshot of Applications & Registrations’ (2018) 40(10) European Intellectual Property Review 623. 5 Art 3(2) of the Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431 [2018] OJ L 104/37. 6 C. Spence, ‘Multisensory Packaging Design: Colour, Shape, Texture, Sound, and Smell’ in P. Burgess, Integrating the Packaging and Product Experience in Food and Beverages (Woodhead Publishing, 2016) 1. 7 B. Hultén, N. Broweus, and M. van Dijk, Sensory Marketing (Palgrave MacMillan, 2009); A.C. Moreira, N. Fortes, and R. Santiago, ‘Influence of Sensory Stimuli on Brand Experience, Brand Equity and Purchase Intention’ (2017) 18(1) Journal of Business Economics and Management 68. 8 Recently culminating in the WTO panel report: Australia—Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging (DS435, DS441, DS458, and DS467) 28 June 2018. For background, including other national initiatives, see the special issue on plain packaging: (2017) 2 Queensland University of Technology Law Review; at .

Introduction 233 formal legal recognition. As the UK Court of Appeal observed, in the context of a challenge to the registration of the colour purple: unconventional or ‘exotic’ marks, such as colours, sounds and smells, give rise to conceptual problems, which are not encountered with more conventional trade names and logos. As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.9

The grant of a colour to one successful registrant will inevitably restrict the use of that colour, or variants of it, on similar products by third parties. Cumulatively, this could lead to an increasingly propertised colour spectrum, where one trader may effectively claim a large part of the blue spectrum for certain products on an ongoing basis, another may do the same for green and so on.10 Similar policy concerns are evident for three- dimensional marks which may incorporate features that are commonly used for that class of product, have technical functions or substantial aesthetic appeal.11 Competitors have an interest in utilising these useful or attractive product features, in order to satisfy consumer demand. These concerns have been historically addressed at the registration stage. Rules relating to the precise representation of marks, how distinctiveness—or the origin-indicating ability of a mark—is to be established and specific policy exclusions for signs that are functional continue to act as exclusionary filters.12 As one experienced commentator summarises it: ‘When thinking about non-traditional marks it is fair to say that, at least outside the United States . . . , most attention is paid to questions of whether, and in what circumstances, such marks should be registered’.13 The scope of protection that colours, shapes, or position marks enjoy after they have been registered remains relatively underdeveloped.14 This chapter is directed at addressing that set of downstream questions.

9 Société Des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [13] (Mummery LJ). The Court of Appeal was referring to concerns initially identified in the decision under appeal: Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2012] EWHC 2637 (Ch), [20]–[21] (HHJ Birss QC). The Spanish Supreme Court has also reiterated that the ‘restriction of the availability of colours for other traders [marketing similar products] is in principle against the general interest’: Orange Personal Communications Ltd v Spain, Jazz Telecom S.A.U., Appeal No. 4301/ 2012, Supreme Court of Spain, 2 Dec 2013; (2014) 45(5) IIC 603, 604. 10 Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793 (AG Léger), [AG101] (‘It would thus be enough for several colours per se to be registered as trade marks to confer a real monopoly of use of the colour on a few traders. Such a monopoly could distort competition’.) 11 Case C-205/13 Hauck GmbH v Stokke [2014] ETMR 60 (AG Szpunar), [AG26]–[AG40]. 12 WIPO, ‘Relation of Established Trademark Principles to New Types of Marks’ (SCT/17/3) 30 Mar 2007. 13 M. Handler, ‘What Should Constitute Infringement of a Non-Traditional Mark? The Role of “Trademark Use” ’ in Calboli and Senftleben (n 3), 165. 14 In addition to Handler (n 13), see the chapters by A. Kur ‘Yellow Dictionaries, Red Banking Services, Some Candies and a Sitting Bunny: Protection of Colour and Shape Marks from a German and European Perspective’ and D. S. Gangjee ‘Paying the Price for Admission: Non-Traditional Marks across Registration and Enforcement’ in Calboli and Senftleben (n 3) 89, 59 respectively; J. Blum and A. Cullen, ‘The Apple Store and Unconventional Trade Marks: How Easy are They to Enforce?’ (2014) 9 Journal of Intellectual Property Law & Practice 1008; G. Engels, J. Hofhuis, and C. Lehr, ‘The Local Colour of Colour Marks’ (2016) 11 Journal of Intellectual Property Law & Practice 628; G. Engels and C. Lehr, ‘Sweets, Cars and Bottles –Three-Dimensional Trade Marks’ (2017) 12(9) Journal of Intellectual Property Law & Practice 797.

234 Non-Traditional Marks and the Likelihood of Confusion The policy concerns underlying exclusion rules in the registration context remain just as relevant even after a non-traditional mark has been registered. When defining the scope of the trade mark owner’s exclusive proprietary rights during opposition, invalidation or infringement proceedings, registries and courts should seize the opportunity to craft a balanced response; one which respects the proprietor’s rights and the general consumer interest in avoiding confusion whilst addressing broader public interest and availability concerns.15 The extent to which public interest concerns, which are manifestly applicable in the registration context, should also feature in the infringement context has been previously noted by appellate courts. In an early decision concerning the registration of an abstract or pure colour mark for violet, the Bundesgerichtshof (BGH) held that while stricter distinctiveness criteria could not be applied for pure colour marks— Libertel would change this by raising the threshold16—pure colours would correspondingly be ‘only entitled to a limited extent of protection’.17 The BGH thus recognised that the process of establishing the scope of protection for non-traditional marks has an important role to play in reconciling competing interests. The CJEU has also indicated that (i) where a three-dimensional mark incorporates certain technical elements of the underlying product but (ii) this falls short of triggering the ‘technical result’ registrability exclusion in EU trade mark law,18 (iii) these technical elements can nevertheless be ignored when comparing the registered mark and third parties’ product shapes for the purposes of infringement analysis.19 Signs which coincide primarily in terms of their technical aspects may not be considered sufficiently similar to satisfy the first limb of infringement analysis. Such partially technical three dimensional marks may therefore qualify for registration but will have a correspondingly limited scope of protection.

2. The Conventional Test Applies In terms of the analytical approach, it is by now settled practice that the conventional test for the likelihood of confusion, as detailed in the preceding chapters of this book, 15 For a review of judicial approaches to the public interest in trade mark law, see I. Fhima, ‘The Public Interest in European Trade Mark Law’ [2017] Intellectual Property Quarterly 311. 16 Libertel Groep BV v Benelux-Merkenbureau (n 10), [60] (Holding that when ‘assessing the potential distinctiveness of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale [the same type of] goods or services’.) 17 Farbmarke violettfarben BGH, 1 Mar 2001 (I ZB 57/98); [2001] GRUR 1154; (2003) 34(3) IIC 312, [24] (Case Note). Similar concerns were expressed in Deutsche Telekom AG v Mobilcom [2004] ETMR 75 (BGH) (Relating to the scope of an injunction prohibiting the use of the colour magenta by competitors). 18 EUTMR, Art 7(1)(e) (ex CTMR 2009, Art 4(1)(e)); TMD 2015, Art 4(1)(e) (ex TMD 2008, Art 3(1)(e)). 19 Case C-48/09 Lego Juris v OHIM, Mega Brands EU:C:2010:516, [72] (When assessing similarity of marks, ‘shapes which do not have the same non-functional element as that contained in the proprietor’s shape. . . are therefore neither identical nor similar to that shape’). As Lynne Chave has pointed out in personal correspondence, it remains unclear how this ‘selective editing out’ approach is to be reconciled with the general confusion test involving a global comparison based on the overall impression produced by marks in the minds of consumers. By contrast, EU design legislation explicitly excludes individual features which are technical from the assessment of the overall impression of a design. See Art 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs [2002] OJ L3/1) (‘a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function’); Case C-395/16 Doceram GmbH v CeramTec GmbH EU:C:2018:172 (interpreting the scope of Art 8(1)).

The Conventional Test Applies 235 applies to conflicts between non-conventional marks. The overarching enquiry remains the same: a registry or tribunal must assess (globally) whether similarities between two marks and their respective goods or services is likely to create consumer confusion as to the source or commercial affiliation of the junior user’s products. The CJEU’s General Court (GC), the EUIPO, and appellate courts of EU Member States have all adopted this approach. The GC confirmed the applicability of the conventional likelihood of confusion test in Weldebräu, in opposition proceedings relating to three-dimensional marks.20 An application to the EUIPO for a transparent or plain three-dimensional mark in the shape of a bottle with ‘a narrowed, helically formed neck’ was opposed on the basis of an earlier EUTM, consisting of a green bottle shape also possessing a helical or ‘twisty’ neck (Figure 8.1). The marks were for identical or similar goods across classes 30, 32, and 33 and included beers, other alcoholic beverages as well as non-alcoholic beverages.

Figure 8.1 Senior mark (left); junior mark (right); images from judgment T-24/08

Denying the opposition and dismissing the appeal, the court endorsed the conventional steps for establishing the likelihood of confusion, focusing on whether the similarity of marks was sufficient to establish confusion (since the goods were identical or similar).21 This called for the visual, aural, and phonetic similarity of the signs as well as their overall impression to be analysed. While both visual similarity and overall impression were especially relevant in this dispute and we return to these issues below, the overarching enquiry is a familiar one. The GC has also applied the familiar confusion test where an application for a Registered Community Design (RCD) is opposed on the basis of conflicting prior trade mark rights in a shape, or where an invalidation challenge to an RCD is mounted on the same grounds.22 20 Case T-24/08 Weldebräu v OHIM, Kofola Holding EU:T:2010:71. 21 Ibid; [15]–[34]. 22 See, e.g. , Case T-148/08 Beifa Group Co Ltd v OHIM EU:T:2010:190; Case T-695/15, BMB sp v EUIPO Ferrero SpA EU:T:2017:684, [30]–[62]; affirmed on appeal in Case C-693/17 P, EU:C:2019:176. The test is applied in the context of Art 25(1)(e) of Council Regulation (EC) No 6/2002 of 12 Dec 2001 on Community Designs [2002] OJ L

236 Non-Traditional Marks and the Likelihood of Confusion In a similar vein, the EUIPO follows this approach in opposition or invalidation disputes involving shape marks and—on at least one occasion—colour marks. For instance, the Opposition Division (OD) has applied the standard likelihood of confusion test in a dispute relating to two ‘word and shape’ marks for bottled water,23 as well as to colour marks.24 EUIPO Boards of Appeal have also adopted the conventional approach in disputes relating to ‘word and shape/logo and shape’ marks.25 UK courts have applied the general case law on likelihood of confusion in the context of shape mark infringement claims,26 as have German courts for shapes27 and colours.28 Nevertheless, specific stages of enquiry within the general analytical framework have been modified to better suit the marks under consideration. For instance, while colours and shapes clearly have visual significance, what conceptual significance or meaning should be attributed to them? And when assessing the distinctiveness of the senior users’ mark as part of infringement analysis, should adjudicators apply the authorities assessing the distinctiveness of non-traditional marks for the purposes of registrability? These and other related issues are considered below.

3. Threshold Enquiry: What is the Defendant’s Mark? Where the likelihood of confusion test is applied in a relative grounds context, when a prior registered mark is the basis for (i) opposing a new application for a mark, or (ii) for invalidating a subsequent registration, identifying the junior user’s mark is relatively straightforward. It is either represented on the registration application form or found on the trade mark register. Identifying the defendant’s mark for infringement purposes is potentially more challenging, as an Australian case helpfully illustrates. Where one trader alleged that another infringed rights in a three-dimensional mark for a plastic moulded chair—sold by the claimant under the POSTURA mark and used in schools— a preliminary question was whether the defendant was using their TITAN plastic chair shape to indicate commercial source. As Foster J put it: ‘There is a substantial contest in 3/1. This provision stipulates that an RCD may be declared invalid if a distinctive sign is used in a subsequent design, and the law of the Union or the law of the Member State governing that prior sign confers the right to prohibit such use. One reason for prohibiting the RCD’s use would be where it leads to likelihood of confusion under trade mark law. 23 Sun Stars & Sons v S.C. Carpathian Springs, EUIPO OD No. B 2 710 849 (22/12/2017) (composite mark consisting of bottle shape with VODAVODA unsuccessfully opposing an application for another bottle shape with ACQUA); Sun Stars & Sons Pte Ltd. v S.C. Valvis Holding, EUIPO OD No. B 2 710 807 (12/02/2018) (similar opposition situation). 24 Fabrimode NV v Robert Bosch GmbH, EUIPO OD No. B 2 783 002 (06/09/2017). 25 See, e.g., Tea Forté, Inc v Dr. Dünner AG, Case R 2492/2010-2 (14 Feb 2012) OHIM BoA; Absolut Company Aktiebolag v OHIM, Messe Commerzgroup Ltd, Case R 1877/2010-2 (17 Feb 2012); Nemiroff Intellectual Property Establishment v BELVEDERE société anonyme, Case R 210/2012-1 (5 Sep 2013) OHIM BoA. 26 Whirlpool Corporation & Ors v Kenwood Ltd [2008] EWHC 1930 (Ch), [69]–[70], [75]; The London Taxi Corporation Ltd v Frazer-Nash Research Ltd & Anor [2016] EWHC 52 (Ch), [243]–[262]. 27 Mag-Lite [2000] GRUR 888 (BGH) (Shape of torches); Abschlussstück [2003] GRUR 332 (BGH) (Three- dimensional mark consisting of the non-writing end of a pen). 28 Gelbe Wörterbücher (Langenscheidt Yellow) [2014] GRUR 1101; (2015) 46 IIC 372 (BGH) (the colour yellow for dictionaries).

Threshold Enquiry: What is the Defendant’s Mark? 237 the present case as to whether or not the promotion, supply and sale of the [defendant’s TITAN] chairs is the use of a shape as a trade mark and, if so, what that shape actually is’.29 The court concluded that the defendant had not used the chair shape as a mark when promoting and supplying the TITAN chair. Reviewing the Australian authorities which have considered this threshold question for non-traditional marks, Michael Handler concludes that the answer turns on the defendant’s manner of use: has the sign been used as a badge of origin or is the defendant merely selling a product which happens to incorporate a shape or colour? This also requires courts to assess the actual or likely consumer reaction to the defendant’s use, taking into account the manner and context of that use.30 These comparative lessons are instructive for EU trade mark law. Two distinct questions tend to be conflated at this preliminary stage. First, what is the defendant’s sign? What are we to look at (and what are we to exclude) as the target of infringement analysis? This can be thought of as the framing question, where a court is asked to zoom in or draw back out to bring the allegedly infringing sign into focus.31 Should we consider the defendant’s use of a particular shape in isolation, or include the defendant’s own trade mark on the shape, additional packaging, or label text and its house colours within the frame of analysis? Second, once the target sign is identified, will the defendant’s use of that sign be perceived by the relevant consumers to have an origin-indicating function? Is it being used to distinguish the commercial source of the defendant’s products? This second question was initially raised before the CJEU as one of trade mark use.32 As a mandatory threshold requirement, trade mark use has been summarised as: ‘[A]‌convenient shorthand expression for use of a registered trade mark for its proper purpose (that is, identifying and guaranteeing the trade origin of the goods to which it is applied) rather than for some other purpose.’33 While the CJEU did not endorse that approach, the underlying question still appears to be relevant— how will the defendant’s use of the disputed sign be perceived—and has seemingly re- emerged within the requirement that the defendant’s use must be ‘in relation to goods or services’,34 that is use for the purpose of distinguishing the commercial origin of goods and services. This is because non-distinguishing but nevertheless objectionable uses of signs are relegated to national law under the EU trade mark law framework.35 Non-distinguishing uses seem to be excluded from the harmonised European infringement tests. Therefore it ‘is likely that “in relation to” goods or services has emerged as 29 Sebel Furniture Ltd v Acoustic & Felts Pty Ltd [2009] FCA 6, [136] (Interlocutory injunction denied). 30 Handler (n 13). 31 This question is considered for conventional marks such as words and images in Chapter 6. For an example involving a successful shape mark infringement claim—albeit under double identity and not likelihood of confusion—see, Revillon Chocolatier, Société Par Actions Simplifiée v Trianon Chocolatiers B.V. [2010] ETMR 16 (Court of Appeal of ‘s Hertogenbosch, The Netherlands), [24]–[25] (chocolate stick shapes resembling a vine shoot). Contextual material on the packaging could be ignored because the defendant’s use of the shape was deemed to be origin-indicating and therefore the appropriate target for infringement analysis. 32 Arsenal Football Club v Matthew Reed (C-206/01) [2002] ECR I-10273; see also N. Dawson, ‘Non-Trade Mark Use’ [2012] Intellectual Property Quarterly 204; A. Blythe, ‘A Useful Test for Trade Mark Use: An Analysis of Current CJEU Guidance and the Difference between Defining Use Online and Offline’ (2016) 38(9) European Intellectual Property Review 563. 33 R. v Johnstone [2003] UKHL 28; [2004] ETMR 2, [76] (Nicholls LJ). 34 TMA, s 10(2); TMD 2015, Art 10(2); EUTMR, Art 9(2). 35 TMD 2015, Art 10(6) (ex TMD 2008, Art 5(5)).

238 Non-Traditional Marks and the Likelihood of Confusion the functional equivalent of the former “use as a trade mark” precondition for infringement’.36 This is a preliminary threshold which has to be met before the infringement analysis can proceed. This second threshold question is especially relevant for non-traditional marks. A defendant may have adopted a shape for its functional attributes, as Remington had in the Australian chapter of the multi-jurisdictional Philips v Remington litigation relating to three-headed electric shavers.37 Merely producing and commercially dealing in electric rotary shavers which had a shape similar to that of a registered trade mark was not sufficient to establish infringement. The defendant’s product shape—the three- headed rotary shaver—would not be perceived as a trade mark since it was adopted to achieve certain technical results, relating to a close and even shave. Similarly, while colours can be registered as trade marks, usually by establishing that the colour has gained a secondary meaning through longstanding use by a particular trader, this does not mean that they lose their primary significance in other contexts.38 A colour may have cultural connotations (red for luck, seduction, or danger), be the natural colour of a product, or be used for decorative purposes. These are legitimate reasons for unauthorised uses. Therefore investigating the precise manner in which the defendant is using the contested sign and how consumers are likely to perceive that use is considered relevant. It is instructive to consider decisions which have addressed this issue in relation to both three-dimensional and colour marks.

3.1 Shapes Courts in the UK seem to have acknowledged the relevance of this threshold enquiry— will the defendant’s use be interpreted in an origin-indicating sense by consumers— although the issue has not been specifically litigated. In Whirlpool,39 the High Court had to decide whether the trade mark proprietor Whirlpool was entitled, inter alia on the basis of the rights conferred by a registered three-dimensional Community Trade Mark (CTM) relating to its KitchenAid Artisan mixer, to prevent Kenwood from marketing kMix stand mixers having a similar shape and appearance. The Deputy Judge was clear: ‘Use “in relation to” means use “for the purpose of distinguishing” the goods or services in question, irrespective of whether the claim for infringement is brought under sub-paragraph (a), (b) or (c) of Article 9 [CTMR]’.40 However the Deputy Judge 36 L. Bently, B. Sherman, D. Gangjee, and P. Johnson, Intellectual Property Law (5th edn, OUP, 2018) 1115. See also Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch), [85] (Arnold J) (Reviewing the CJEU authorities which suggest, albeit not emphatically, that use ‘in relation to’ goods and services implies use for the purposes of distinguishing between products on the basis of their commercial origin). 37 Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 (No use as a trade mark for the purposes of infringement). It should be noted that Australia lacks explicit rules excluding shapes from registration on the basis of functionality. It is therefore at the stage of determining the scope of rights during infringement proceedings that such policy concerns are addressed. 38 Kur (n 14). 39 Whirlpool v Kenwood (n 26). 40 Ibid, [73] (emphasis in the original) (DJ Geoffrey Hobbs, QC).

Threshold Enquiry: What is the Defendant’s Mark? 239 goes on to suggest that the only doctrinal hooks which accommodate arguments of non-distinctive use by the defendant are found in (i) the explicit descriptive use defence41 and (ii) for other scenarios such as where the defendant is using a sign purely decoratively, they must argue that the use will not harm the functions of the claimant’s mark.42 Even in non-double identity situations (i.e. for claims other than s 10(1), TMA 1994) it seems to be presumed that the defendant is using the sign as a trade mark and it is up to the defendant to rebut this by showing the use is descriptive, decorative, or does not otherwise harm any of the trade mark functions. To similar effect, in London Taxi,43 Arnold J concluded that where the defendants were manufacturing a taxi (the Metrocab) which looked broadly similar to the three- dimensional CTM and UK trade mark registered by the claimants for ‘iconic’ London taxis, the defendants were not using their shape to indicate the commercial origin of the Metrocab. They were using it merely descriptively, as an indication to signal ‘the kind, intended purpose and geographical use of the vehicle, namely that it is suitable for use as a licensed London taxi’.44 However that analysis was conducted within the framework of the descriptive use defence found in Article 12(b), CTMR 2009 and Article 6(1)(b) of the TMD 2008, instead of as a requirement to establish infringement in the first place. The Court of Appeal followed the same mode of analysis, assessing the question of whether the defendant was using the mark descriptively under the descriptive use defence.45 While the Court of Appeal suggested that a descriptive use defence should not have been successful, it did so without addressing the prior question of whether the defendant’s use of its taxi would be seen as use in relation to goods and services, that is use for the purposes of indicating commercial origin. If the claimant’s three- dimensional marks had been held to be valid, the court seems to have presumed that the defendant’s use would be perceived as trade mark use but the basis for this presumption is not entirely clear. By contrast, German courts have considered the issue of the nature of the defendant’s use as a distinct threshold enquiry. The BGH has held that a shape mark for a confectionary product in the form of a chocolate covered meringue—which it was argued shouldn’t have been registered in the first place46—could not be used to prevent the defendant from selling a similarly shaped meringue imported from the Ukraine, in packages showing images of the meringue along with the defendant’s own trade mark.47 While both meringues were indeed very similar, that was because they both conformed to the generic shape of this confectionary as it was conventionally produced in Russia and neighbouring countries. Consumers would view the defendant’s use as indicating

41 EUTMR, Art 14(1)(b) (ex CTMR 1994, Art 12(b); ex CTMR 2009, Art 12(b)). 42 Whirlpool v Kenwood (n 26), [73]. 43 London Taxi v Frazer-Nash (n 26), [270]–[283]. 44 Ibid, [271]. 45 The London Taxi Corporation v Frazer Nash Research Ltd [2017] EWCA Civ 1729, [92]–[96] (Floyd LJ). We are grateful to Lynne Chave for pointing this out. 46 Invalidation proceedings against the mark had commenced but it remained valid at the time of the infringement proceedings. 47 Russisches Schaumgebäck (Russian meringues) [2005] GRUR 414 (BGH).

240 Non-Traditional Marks and the Likelihood of Confusion the generic type of product and not for the purposes of distinguishing the product’s commercial source. Consequently, there was no infringement because there was no trade mark use to begin with. The BGH has also had occasion to unpack the following set of issues: where a product is sold in external packaging which is distinctive, either because of its trade dress or because of the use of a word mark on the packaging, can the shape of the product within the packaging nevertheless be sufficiently distinctive such that consumers who encounter the defendant’s bare or unwrapped product will perceive this ‘bare shape’ as indicating commercial origin as well? Or will the defendant’s own packaging and distinctive marks, which are doing origin-indicating work, ensure that the underlying product is seen merely as just that—a product—and not as a trade mark?48 The three- dimensional mark being asserted related to Ferrero Rocher’s nut-encrusted chocolate truffle spheres, as depicted in Figure 8.2.

Figure 8.2 Senior mark (left); defendant’s product shape (right); images from judgment Pralinenform I, BGH, 25. 1. 2007–I ZR 22/04

Over the course of two decisions focusing on how consumers are likely to interpret the defendant’s product shape in these circumstances, the BGH has provided the following guidance: (i) An essential precondition for infringement is that the defendant is using the shape, or will be perceived by consumers to be using the shape, to distinguish the origin of goods (which would in principle lead to potential harm to the origin- indicating function of the registered trade mark). (ii) This is a question of fact to be determined by the relevant tribunal (here the trial or first instance court). (iii) However the mere fact that the claimant’s ‘bare’ shape mark was registered –that is the claimant’s shape was presumed to have source indicating capacity at the time of registration –did not imply that a similar shape used by the defendant would necessarily be viewed as use in an origin-indicating sense at the time of infringement. The perception of the relevant public may have shifted since the 48 Pralinenform I (Shape of Confectionary) [2007] GRUR 780 (BGH); Pralinenform II (Shape of Confectionary) [2010] GRUR 1103; [2011] ETMR 29(BGH). Much of the relevant German case law is surveyed in Pralinenform II.

Threshold Enquiry: What is the Defendant’s Mark? 241 time the claimant’s mark was registered, while the defendant’s context of use was relevant. (iv) While likely consumer perception of the defendant’s manner of use—how consumers will ‘read’ the contested sign—is central to the enquiry, courts must bear in mind the CJEU’s guidance in relation to registrability: ‘Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark’.49 (v) In at least two situations this presumption of consumer indifference can be displaced: where sectoral practices in the specific market for those products make consumers predisposed towards reading trade mark (i.e. commercial origin indicating) significance into unconventional signs, or where the signs in contention depart significantly from the norms and customs of the sector, thereby suggesting consumers are likely to perceive them as trade marks. (vi) The specific context of the defendant’s use cannot be ignored. Thus it is relevant that consumers first encounter the disputed shape when it is packaged and sold under the defendant’s own word mark and trade dress. For most consumers, the unadorned shape is only perceived in the moment between unwrapping the chocolate and eating it. (vii) However the specific attributes of the claimant’s mark cannot be ignored either. To the extent that the claimant’s mark is highly distinctive, that is to say it is a strong mark, this is relevant as it will influence how consumers are likely to perceive the defendant’s mark. German courts therefore follow the approach that the claimant’s trade mark distinctiveness—in the form of either acquired recognisability and reliance, or inherent distinctiveness—will influence the public’s perception or propensity to read the defendant’s adoption of a sign as trade mark use. This aspect was particularly significant in a subsequent dispute relating to the shape of the BOUNTY chocolate bar.50 The court of appeal (Oberlandesgericht Köln) had favoured the defendant’s arguments, holding that it’s WISH chocolate bar shape, which was almost identical to the BOUNTY shape, would not be perceived as trade mark use. The defendant inter alia made the following arguments: first, the chocolate bar was always sold in packaging bearing the defendant’s own mark WISH. This mark would do the heavy lifting in terms of indicating product

49 Case C-136/02 P Mag Instrument Inc v OHIM [2004] ECR I-9165, [30] (shapes); see also Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793, [65] (similar presumption for colours); Case T- 408/15 Globo Comunicação e Participações S/A v EUIPO (13 Sep 2016) EU:T:2016:468, [41]–[44] (presumption potentially applicable to sounds, depending on the product sector). This legal presumption, which has been subsequently endorsed, was first made in the context of assessing the inherent distinctiveness of shapes or colours i.e. whether they are likely to be viewed for the first time as trade marks, without any evidence of acquired distinctiveness. Whether it is appropriate to apply this guidance from the registrability context to the infringement context has not been adequately debated. 50 Dreidimensionalen Marke für Schokoladenriegel—Bounty [2016] GRUR 197 (BGH).

242 Non-Traditional Marks and the Likelihood of Confusion origin. Second, the considerable variations in shapes, sizes, and decorations on chocolate bars in that market sector would make consumers more likely to view aspects of product shape as aesthetic embellishments or functional necessities. Third, because the claimant’s original registration had been achieved on the basis of acquired distinctiveness—the chocolate bar did not depart significantly from the norms and customs of the sector such that it was inherently distinctiveness— the distinctiveness (strength) of the shape mark was only average as opposed to strong.51 However the BGH overruled the appellate court and interpreted evidence of acquired distinctiveness to favour the claimant. The BGH concluded that the original acquired distinctiveness survey of 2004, showing relevant recognition by 53.2% of the public, had continued relevance. Since it had been factually established that the public read origin significance into the BOUNTY chocolate bar shape, it could be presumed that this finding was still valid and the defendant’s bar was near-identical. Therefore the origin-indicating significance associated with the BOUNTY bar (albeit only measured in 2004) could be transposed to the defendant’s bar at the subsequent date of the infringement proceedings, since it was near-identical. By contrast, where the defendant’s shape has perceptible differences, this transposition of the claimant’s origin-indicating salience to the defendant’s use should not occur.

3.2 Colours The question of whether the defendant’s use of the disputed sign will be perceived as indicating commercial origin has also proved relevant in cases relating to colour marks. Once again, German courts have relatively greater experience with this question. Where the defendant produced dental impression material that eventually manifested in a colour similar to the claimant’s registered colour mark, the BGH concluded that consumers would be unlikely to attach origin-indicating significance to the defendant’s use of the colour and there was no infringement.52 Dental impression material consists of two components and legal regulations require each component to have a contrasting colour, to ensure they are properly blended together in the final mixture. The defendant’s dental impression material was sold in two contrasting colours—red and blue—which only resulted in a purple shade similar to the claimant’s mark after the mixing had taken place. End users or consumers would view the colour of such materials as having a technical function—ensuring the mixing was complete—and would 51 Not every mark which satisfies the distinctiveness threshold for registrability—establishing that it has actual or potential origin-indicating ability—is necessarily a highly distinctive mark i.e. strong, in the form of commanding consumer attention and affecting purchasing decisions. For helpful conceptual mapping in the US context, see T. D. Greene and J. Wilkerson, ‘Understanding Trademark Strength’ (2013) 16(3) Stanford Technology Law Review 535; B. Beebe and C. S. Hemphill, ‘The Scope of Strong Marks: Should Trademark Law Protect the Strong More than the Weak’ (2017) 92 New York University Law Review 1339. 52 Dentale Abformmasse (Dental impression material) [2005] GRUR 1044 (BGH).

Threshold Enquiry: What is the Defendant’s Mark? 243 only encounter the final similar shade of purple after the point of sale, when the mixing had concluded. A colour would not be read as a trade mark in these circumstances. Turning from technical uses to decorative ones, an illustration is provided by infringement proceedings between proprietors of the dark blue colour trade mark associated with NIVEA and a competitor, whose skin and body care products were sold under the DOVE mark using a similar shade of blue as a background colour.53 The Hamburg Higher Regional Court (Oberlandesgericht Hamburg) held that consumers would view the defendant’s use of blue merely as a background colour and not as an indication of origin. The BGH has also underscored the significance of context, in a dispute between German savings banks (the Sparkassen) who had registered a shade of red as their mark for banking services and the Spanish banking group Santander, which uses a similar shade of red as part of its corporate colours.54 In infringement proceedings, the BGH held that while some contexts—such as online use by Santander of red on a web page relating to banking services—would favour infringement, by contrast where Santander used red merely as part of its corporate image when sponsoring a motor racing event as part of the background advertising, with no reference to specific products, there was no relevant use of the colour as a trade mark.55 When it comes to assessing consumer perception, the default presumption for shapes is equally applicable to colours: consumers are unlikely to perceive colours on the packaging of products as an indication of origin. This presumption—borrowed from the rules which assess whether a mark is sufficiently distinctive to be registered—has migrated across to the infringement context, where it sets the stage for assessing how the defendant’s use of a colour is likely to be perceived by consumers. However this presumption can be displaced where the claimant can demonstrate that its colour mark possesses enhanced distinctiveness (i.e. communicative strength), either based on acquired distinctiveness through use over time,56 or where it has been used in a very specific context for goods or services in a manner sufficiently unusual to make it memorable and distinctive (i.e. determined by practices specific to the market sector).57 An influential illustration of the former exception relates to the colour lilac or purple. The defendant used a shade of this colour on chocolate biscuit packaging that was similar to the claimant Kraft’s colour mark used for MILKA chocolates, biscuits, and confectionaries.58 On the facts, it was held that this particular shade of lilac had come to epitomise the MILKA brand and stood out despite all the other design elements on the packaging. Its use on the defendant’s packaging would therefore be read by consumers as trade mark use. 53 Nivea/Dove (19 Nov 2008) Case 5 U 148/07, OLG Hamburg. That colours serve decorative or informational functions was reiterated in Nivea-Blau [2015] GRUR 1012 (BGH). However the shade of dark blue associated with Nivea was likely to remain successfully registered on the basis of survey evidence establishing acquired distinctiveness. 54 Sparkassen-Rot/Santander-Rot [2015] GRUR 1201 (BGH). 55 Ibid, [67]–[69], [73]. 56 Lila-Schokolade (Purple Chocolate) [2005] GRUR 427 (BGH). See also W.H. Siliconform v Orvipesa Agromilk (11 March 2009) No. 07/04481 (Tribunal de Grande Instance Paris) (The colour yellow used on teats for milking machines was highly distinctive, since the default colour for such products is black). 57 Farbe gelb (Yellow) [2010] GRUR 637 (BGH). 58 Lila-Schokolade (n 56).

244 Non-Traditional Marks and the Likelihood of Confusion More recently, the BGH has revisited the question of how consumers are likely to perceive a colour when it is used alongside other trade marks (such as word marks or figurative logos) on both the claimant and defendant’s products in Gelbe Wörterbücher.59 This has direct parallels with the issues arising in the FERERO ROCHER chocolate spheres litigation, considered above.60 Will the word or logo marks convey source so emphatically that the defendant’s use of colour is pushed to the background, relegated to being merely decorative or having some other, non-origin-indicating purpose? The German publishing house Langenscheidt sells bilingual dictionaries, as well as comparable electronic reference works, under the LANGENSCHEIDT mark. It was the market leader in Germany at the relevant time. It had used a specific shade of yellow along with the letter ‘L’ in blue for dictionaries since 1956 and for language learning products (such as complete courses and grammar trainers) since 1986. An abstract colour mark for yellow was registered dating back to 1996, for ‘bilingual dictionaries in print format’. The defendant, Rosetta Stone, sold language learning software in packaging with a similar shade of yellow, bearing ROSETTASTONE and a blue figurative mark in the shape of a semi- circular stele. The defendant also used this shade of yellow in its advertising. The question arose as to whether the defendant’s use of yellow was use as a mark, for the purposes of distinguishing commercial source, or mere background use of a colour. In its judgment, the BGH confirmed the court of appeal’s decision that this was trade mark use on the following grounds:61 first, the default presumption that consumers do not regard colours as source indicators could be displaced, since there was a long-standing practice in the market sector for bilingual dictionaries where colour was used to indicate commercial origin. Thus, the claimant had used yellow while one of its competitors had used a specific shade of green for decades. This would influence public perception not just for bilingual dictionaries but more generally for all language learning products, since all language study aids were part of the same market segment. Second, since this sector-specific marketing practice (making consumers likely to view colours as origin indicators) had already displaced the formal presumption that consumers don’t regard non-traditional signs as marks, the claimant was not required to prove that its mark was highly distinctive. While evidence of being a highly distinctive or strong mark would always assist the claimant in arguing that the defendant’s use would be perceived to indicate origin, it was not necessary to rebut the presumption in this case. Third, the contextual evidence relating to Rosetta Stone’s actual use of yellow established that it would be seen as a mark. Yellow was used both on product packaging and in its advertising—in print and electronic media as well as the Internet—such that it had independent significance. It used the colour widely, including on all thirty-three languages for which it offered software. The colour therefore functioned as Rosetta Stone’s house colour. Fourth, the argument that the defendant’s own word mark did the source indication work and yellow was merely

59 Langenscheidt v Rosetta Stone (Langenscheidt Yellow) [2015] GRUR 581; (2015) 46 IIC 372.

60 See text accompanying (nn 48–51).

61 Langenscheidt Yellow (n 59), [23]–[32].

Applying the Test 245 a background colour could not be reconciled with the manner of its use (effectively, as a house colour). The relevant public would perceive the defendant’s use of yellow as a secondary mark, with an independent distinguishing function.62 Finally, besides answering the question of whether the colour was being used as a mark, this BGH decision has added significance. Once the colour yellow was identified as having an independent distinguishing function on Rosetta Stone’s products, it became the sole target or focus of the infringement analysis. The BGH confirmed that the appellate court was entitled to ignore the defendant’s own word mark ROSETTASTONE as well as its own logo, while focusing solely on a colour-for-colour comparison which greatly favoured a likelihood of confusion.63 Before concluding, it is worth reminding ourselves of the fact-sensitive nature of this threshold enquiry. The specific context of the defendant’s use will determine whether it is likely to be perceived as a trade mark by the relevant public and (injunctive) remedies which prohibit any possible use of a colour by the defendant in the future have been held to be impermissible. Where the claimant Deutsche Telecom asserted rights in the colour magenta for telecommunications products and services, the BGH upheld injunctive relief against a similar shade of magenta used by a competitor advertising telecommunication services.64 The specific context of the competitor’s four disputed newspaper advertisements—the eye catching use of a very similar colour as background, as well as its use to depict the network provider code and its prominence in larger font text for advertising slogans and prices—would lead consumers to view the colour as indicating origin, since the rest of the advertising was in black and white.65 However the injunction granted by lower courts, which prohibited any use of magenta by the defendant in the future, was impermissible since it was excessively broad. This was notwithstanding the fact that the claimant argued it had an abstract colour mark which could be deployed in different ways in the future. Magenta could continue to be used by competitors in a decorative or incidental manner and a blanket prohibition on its use in any form in the future was not justifiable.

4. Applying the Test 4.1 Similarity of Marks When assessing the similarity of marks, tribunals are required to assess their visual, aural (or phonetic), and conceptual similarity as well as the overall impression produced, bearing 62 In this regard, Langenscheidt Yellow (n 59) marks a departure from prior decisions emphasising that conventional indications of origin such as word marks may overshadow colours to such an extent that the latter are considered merely decorative or only present as a background. See Lila-Schokolade (n 56); Nivea/Dove (n 53); Wörterbuch Gelb [2013] GRUR-RR 213 (OLG Köln). 63 Langenscheidt Yellow (n 59), [54]–[55]. 64 Farbmarkenverletzung I (Magenta) [2004] GRUR 151 (BGH); (2004) IIC 1050. 65 These features were sufficiently prominent and would attract consumers, notwithstanding the fact that the defendant’s own trade mark MOBILCOM was also used in the advertisements, since it was less prominent.

246 Non-Traditional Marks and the Likelihood of Confusion in mind the distinctive and dominant elements of the marks under consideration.66 Visual and aural similarity are examples of sensory similarity, which could also extend to olfactory similarity for scents (assuming olfactory marks can ever satisfy the representation requirement).67 The GC has reasoned that for a comparison of ‘pure’ shape marks, in the form of two bottles with helical or corkscrew-like necks, visual similarity has particular relevance since aural or conceptual similarity cannot be assessed for pure shape marks.68 The court affirmed the Board of Appeal’s decision that the two bottles had significant visual differences, despite the necks of both bottles being helically formed, such that they had only a low degree of visual similarity.69 In so doing, it rejected arguments that the overall visual impression of the two bottles led to similarity at a certain level of abstraction. The UK High Court has also confirmed the primacy of visual similarity in such situations: where the signs being assessed ‘are shapes, the relevant comparison is visual rather than aural or conceptual’.70 EUIPO Boards have also adopted this approach.71 A Belgian court states this more directly: ‘Since a phonetical and conceptual comparison is not possible for shape marks, the similarity between the mark and the sign can only be examined from a visual point of view’.72 The EUIPO Guidelines also endorse this approach, adding that where the senior shape mark has enhanced distinctiveness, this will affect its visual impact as part of the overall impression created.73 However where the underlying shape has low distinctiveness—such as where a ‘sitting rabbit’ wrapped in foil is commonly used to sell chocolates—this will lead to low visual similarity. The differences between the shapes, including the presence of word marks, will lead to a different overall impression and reduce the likelihood of confusion.74 When it comes to colour marks, the few available decisions indicate that tribunals are sensitive to concerns in relation to broad rights being granted over colours.75 This is evident in opposition proceedings where a colour combination mark for olive green and ochre (dull yellow) was the basis for objecting to an application for green and yellow, where both were in relation to hand tools or implements, including those used for forestry or agriculture, in class 8.76 An EUIPO Board of Appeal set out CJEU case law emphasising (i) the presumption that consumers are unlikely to perceive colours as trade marks in the normal course; (ii) ‘the public interest in ensuring that colours remain available to competitors since the number of colours actually available and that can be 66 Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport ECLI:EU:C:1997:528, [23]. See Chapter 2 for details. 67 Case C-408/01 Adidas v Fitnessworld [2003] ECR I-12537, [AG43] (AG Jacobs). 68 Case T-24/08 Weldebräu (n 20), [24]. While there was a word element (‘snipp’) on one of the marks, it was minor in size and engraved on the bottom of the bottle, making it unlikely to affect the overall impression of the mark. 69 Ibid, [25]–[29]. 70 The London Taxi Corporation Ltd v Frazer-Nash Research Ltd & Anor [2016] EWHC 52 (Ch), [251] (Arnold J). 71 See Absolut Company Aktiebolag (n 25), [28] (Where two bottles with word marks on them were being compared, the word mark elements had conceptual significance; however: ‘The bottle shapes as such do not have a concept’). 72 Mars Inc v Joseph Deters [2015] ETMR 14 (Commercial Court of Brussels), [74]. 73 EUIPO Guidelines for Examination of EU Trade Marks (01/10/2017), Part C, Section 2, Ch 4 Comparison of Signs, [3.4.1.7]. 74 Chocoladefabriken Lindt & Sprungli v Terravita Case R 0806/2009-4 (9 Nov 2010) OHIM BoA. 75 See the German decisions reviewed in Section 3.2 of this Chapter. 76 Proxxon S.A v Franz Jost AG, Case R 755/2009-4 (20 Oct 2010) OHIM BoA.

Applying the Test 247 distinguished by the consumer is limited’; and (iii) the fact that green was commonly used in the agricultural sector.77 With these principles in mind, the differences between the juxtapositions of two colours and shades selected would lead to a different overall impression and therefore low similarity. Evidence of enhanced distinctive character acquired through use was not available to assist the opponent. The EUIPO Opposition Division (OD) also resisted attempts to argue that since consumer recollection is imperfect, differences between two colour marks would be ignored (Figure 8.3).78

Figure 8.3 Senior colour mark (left); defendant’s application for a figurative mark (right); images from EUIPO Opposition Decision No B 2 783 002

The senior mark consisted of vertical straight lines in different shades of green, blue, red, pink, and orange. The shades selected, their ratio and relative positioning constituted the protected content of this (multi)colour senior mark. The applicant had applied for a rectangular figurative mark containing vertical, overlapping geometrical forms, such as a triangle, rectangle, or rhombus, and curved and wavy lines towards the right of the figure. The colour shades changed vertically across the rectangle. If the OD had agreed with the opponent’s arguments, it would have effectively conceded rights over the concept of a vertically arranged colour spectrum. It instead concluded that since ‘the signs coincide only in irrelevant aspects, namely the fact that the stripes of the signs are displayed vertically and have some colours in common’ the signs were not visually similar.79 Colours could also not be compared phonetically or conceptually, so the signs were overall dissimilar. In opposition proceedings, the French trade mark registry has also held that where two shades of green differed (one lighter and one darker), they would produce a different overall impression in the minds of consumers resulting in no likelihood of confusion since the marks were dissimilar.80 However where a colour mark is highly distinctive and associated with a specific product, visual similarity would be enough to tip the scales in favour of confusion being established.81 Furthermore, where colour formed a prominent part of trade dress—as was the case in a dispute involving the use of green applied to the exterior of British Petroleum service stations—the Court of Appeal of Northern Ireland concluded that there will be a likelihood of confusion.82 77 Ibid, [18]–[22]. 78 Fabrimode NV v Robert Bosch GmbH, EUIPO Opposition No B 2 783 002 (06/09/2017). 79 Ibid, 3. 80 Federation Internationale Des Logic v Go Voyages, OPP 11-2775/CJR and OPP 11-2776/CJR (INPI) France (28 Feb 2012). 81 Lila-Schokolade (n 56). 82 BP Amoco Plc v John Kelly Ltd [2002] FSR 5 (NICA).

248 Non-Traditional Marks and the Likelihood of Confusion Finally, the enforcement of abstract colour marks in the context of pharmaceuticals is an emerging and controversial field. Based on registered (or in some cases unregistered) claims to a specific shade of the colour purple, GlaxoSmithKline (GSK) has asserted rights against third parties with limited success. Courts seem to react warily where a right-holder claims exclusivity in an abstract colour mark which can be used in a variety of different ways and against a range of similar shades of colour.83

4.2 Hybrids and Combinations: the Composite Mark Approach Non-conventional signs are often combined with other elements to make up a combined or hybrid mark, such as a shape-plus-word or shape-plus-device.84 How should a comparison between such marks or signs be approached? German courts had the occasion to address one very significant issue which this raises. Where a mark consists of a word element and a shape, will the word element always be dominant in terms of consumer perception? Can there be a legal presumption which stipulates that the word element will always command greater consumer attention?85 If such a rule is adopted, a likelihood of confusion claim is less viable where the defendant is using a similar shape but a different word element or logo. The marks will differ in terms of their dominant or more important word elements, according to this legal presumption. Precisely this issue was at the heart of a dispute relating to Lindt’s chocolate rabbits wrapped in golden foil.86 The defendant in infringement proceedings also made chocolate rabbits but argued that the use of the claimant’s own widely known mark LINDT GOLDHASE on the rabbits as well as certain distinctive features of its trade dress, such as a red collar and bell, would be sufficient to prevent any confusion between the claimant and defendant’s products. The defendant’s product was characterised by the words RIEGELEIN CONFISERIE on its side, written on a white and prominent background. In addition, the defendant’s rabbit had a brownish-red bow instead of a red collar with a bell. The BGH emphatically rejected the argument that there could be a legal presumption (or ‘rule of experience’) that the word element would always command greater attention from relevant trade circles: It thus may not be assumed that the overall impression of the claimants’ trade mark first of all is determined by the word element ‘Lindt GOLDHASE’. The Higher Regional Court [of Frankfurt am Main erroneously] bases its opposing view on the rule of experience according to which as is the case for word/device marks in regard 83 A convenient overview of international litigation is found in Glaxosmithkline AS v Novartis, Sandoz, Case 16- 019739ASD-BORG/03, Borgarting Court of Appeal, Norway (20 April 2017). 84 Such hybrid marks have a better prospect of proving inherent distinctiveness (thanks to the word or logo element) and avoiding functionality exclusions. See Whirlpool v Kenwood (n 26), [10]–[23]; Gangjee, ‘Paying the Price for Admission’ (n 14). 85 This has direct parallels with the issues considered in Chapter 3, which assesses whether word or figurative elements will command greater attention in a more conventional composite mark. 86 Golden Rabbit Trade Mark [2007] ETMR 30 (BGH).

Applying the Test 249 to three-dimensional marks, too, the relevant trade circles paid more attention to the word element than the device element.87

Despite ruling against any such general legal presumption, the defendant was eventually successful in this dispute. The Frankfurt Court subsequently concluded that the word element of the mark was highly distinctive whereas the distinctiveness of the trade dress elements was low, given the fact that there were many similarly shaped rabbits on the market. Since there was no similarity as regards the highly distinctive elements (i.e. the words), but only similarity as regards the weakly distinctive trade dress elements (shape and colours), the court decided that the overall impression of the marks was dissimilar. As the first stage of the infringement analysis (are the signs sufficiently similar?) collapsed, infringement was not made out.88 Subsequent German cases also confirm that the approach seems to focus on the distinctive and dominant elements of such composite marks, regardless of their ontological status.89 The EUIPO approach to combined or hybrid non-traditional marks now also aligns with the general approach to composite marks outlined in Chapter 3. In invalidation proceedings relating to three-dimensional marks for vodka bottles, each of which had word marks as part of the three-dimensional sign (NEMIROFF and CK VODKA), the Board of Appeal expressly adopted the CJEU approach for analysing composite marks, where each of the marks as a whole must be compared with the other, with due regard being given to their distinctive and dominant elements. Following the approach set out in comparisons of words and figurative mark hybrids, there was no automatic presumption that the word element must always be considered to be dominant.90

4.3 Conflicts Across Categories The question of whether a mark in one category (a word) can be infringed by the use of a mark in another (a device) has already been considered in Chapter 2, Section 4.8. Conceptual similarity between them may be sufficient to support the likelihood of confusion. For instance, EUIPO guidance indicates that a conflict across categories of marks is possible when assessing oppositions or invalidation actions: the word mark TIGER could have conceptual identity with a figurative mark depicting a tiger.91 This

87 Ibid, [22]. 88 Lindt v Riegelein Confiserie [2012] GRUR-RR 255 (Higher Regional Court Frankfurt). An appeal to the BGH was denied in 2013, since it did not raise any fundamental issues of law. 89 See, e.g., TUC-Salzcracker [2008] GRUR 505, [32]; Goldhase II [2011] GRUR 148 (The more distinctive the element within a composite mark, the more important its role for the assessment of the overall impression of similarity); Parfumflakons, Case 6 U 220/15 (17 Nov 2016) (Oberlandesgericht Frankfurt am Main) Bottom of Form (Where the design of perfume bottle shapes with flowers acting as a stopper on top was very similar, different word marks would not assist the defendant). 90 Nemiroff Intellectual Property Establishment (n 25), [57]–[60]; see also Absolut Company Aktiebolag (n 25), [24]–[29]. 91 EUIPO Guidelines for Examination of EUTMs, Part C-Opposition, Section 2—Double Identity and Likelihood of Confusion, Chapter 4—Comparison of Signs (1 Oct 2017) at [3.4.4.5].

250 Non-Traditional Marks and the Likelihood of Confusion continues to hold true where non-traditional marks are concerned. Whether a word mark can be infringed by a product shape has been litigated to the highest levels in Germany and helpfully illustrates some of the underlying issues. Although the initial infringement claims included the likelihood of confusion, the trial court chose to focus on dilution in the form of detriment to distinctiveness. Nevertheless the manner in which the courts approached the similarity of two marks which are otherwise in different categories is instructive. Before the Regional Court of Cologne, Haribo successfully argued that its ‘gold bear’ word marks (GOLDBÄR; GOLDBÄREN) and its device mark (a yellow-gold coloured bear wearing a red ribbon bow in Figure 8.4) registered for confectionary were infringed by Lindt’s three-dimensional gold-foil wrapped chocolate teddy bears.92 A central issue was whether the word marks could be infringed by a shape which evoked the meaning of the words.93 More specifically, in assessing whether marks are similar, a tribunal is required to (i) ascertain the concept that is triggered by a shape in the minds of the relevant public; and (ii) then compare that concept with the one evoked by the word mark.

Figure 8.4 Senior device mark (left); defendant’s allegedly infringing product shape (right); images respectively from EUTM 009423757; Goldbären I ZR 105/14, 23 Sep 2014 (BGH)

The trial court concluded that the shape of the teddy bear connoted Haribo’s protected national (German) marks and EUTMs. The golden teddy shape would remind consumers of Haribo’s bear since, as Haribo argued, consumers were likely to refer to the Lindt product as Goldbär or Goldbären in the plural due to their visual

92 GOLDBÄREN/Gold Bears, 33O 803/11, 18 December 2012 (Regional Court of Cologne); B. Clark, ‘Gold Bear Wars’ (2013) 8(7) Journal of Intellectual Property Law & Practice 498 (Case note). 93 On the preliminary question of whether Lindt was using the teddy bear shape as a trade mark in the first place—considered in Section 3.1 of this chapter—Haribo successfully argued that consumers would indeed perceive the shape as indicating commercial origin. The golden teddy bear was an extension of Lindt’s animal shaped chocolate products line, including the golden rabbit shape, which Lindt had extensively argued was a trade mark in other contexts.

Applying the Test 251 appearance.94 This manner of referring to the chocolate teddy would be adopted since the majority of consumers would pick the closest and most obvious term when describing Lindt’s bears. They would not use terms such as ‘gold bear figure’, ‘bear wrapped in gold foil’ or ‘gold-coloured chocolate teddy bear’. It did not matter that Goldbär was not a dictionary term; it would still be the most obvious term to use for the Lindt product, especially in light of the fame of Haribo’s word marks. There was BGH precedent which indicated that in disputes relating to a word mark conflicting with a figurative or device mark, conceptual similarity alone could lead to infringement.95 This would be where the concept generated by the figurative mark was the same as the word and where manner in which this concept was articulated was the obvious, unforced, and exhaustive term (naheliegende, ungezwungene und erschöpfende) for the figurative mark. While the Court of Appeal endorsed the general approach—in principle, a word mark could be infringed by a shape—it disagreed as to whether the natural or immediate mental reference for Lindt’s shape would be ‘Goldbär’.96 There were several levels of increasingly abstract references between Lindt’s shape and ‘Goldbär’, which did not make it the most immediate and appropriate description for the shape. The overall impression of consumers would additionally be influenced by the distinctive features of Lindt’s own packaging (the gold in the foil wrapping, the red ribbon, the shape of the ears, depiction of the face, the paws etc.). The appearance of Lindt’s own word mark elements on the wrapping were particularly important as an indication of origin, while Lindt’s own gold bunny product line would also be a likely connotation when seeing the gold chocolate teddy. ‘Lindt-Teddy’, which appeared on the packaging, was therefore a more obvious description for customers. Cumulatively this suggested the signs were not sufficiently similar to lead to the detriment of distinctiveness or unfair advantage. On a further appeal, the BGH affirmed the Court of Appeal’s approach.97 Where there is a conflict between a word mark and a shape or product design, only conceptual similarity—expressed as similarity in meaning (Ähnlichkeit im Bedeutungsgehalt)—is relevant.98 Three aspects of the decision are worth emphasising. First, infringement on the basis of conceptual similarity alone runs the risk of granting the trade mark proprietor a legal monopoly over a concept. Therefore the conceptual identity or similarity test in such situations should be ‘contingent on strict requirements being met. A three- dimensional design can only be the obvious, unforced and exhaustive designation of a word mark if the public is compelled to associate the trade mark word with the accused design, without several mental steps being needed to do so’.99 Second, flowing as a consequence from this, the ‘mere possibility that the [shape or] design is named with the trade mark word is not sufficient to assume any conceptual similarity of the 94 This would in turn lead to the detriment of the distinctiveness or the ‘dilution’ of Haribo’s word marks. 95 Oldtimer [1971] GRUR 251 (BGH); Zwilling/Zweibrüder [2004] GRUR 779 (BGH). 96 GOLDBÄREN/Gold Bears 6 U 230/12, 11 April 2014 (Higher Regional Court of Cologne); B. Clark, ‘Gold Bear Wars Reloaded’ (2014) 9(10) Journal of Intellectual Property Law & Practice 795 (Case note). 97 Goldbären I ZR 105/14, 23 Sep 2014 (BGH); also reported as HARIBO GmbH v Chocoladenfabriken Lindt & Sprüngli [2016] ETMR 23 (BGH). 98 Goldbären (n 97), [34]. 99 Ibid, [35] (Translation from HARIBO GmbH (n 97)).

252 Non-Traditional Marks and the Likelihood of Confusion trade marks’.100 Third, survey evidence established that only 8.5% of consumers surveyed used ‘Goldbär’ or associated terms to describe Lindt’s chocolate teddy. A much greater proportion (37 %) used other terminology including ‘Teddy’/‘Teddybär’, ‘Lindt Schokoladenbär’, ‘Lindt Bär’, and ‘Lindt Bärchen’.101 The marks were therefore not sufficiently similar for the infringement tests to proceed.102

4.4 The Defendant’s Context of Use In Section 3 of this chapter, we have already seen that the defendant’s context of use is relevant for determining whether the use is one which harms the functions of a non- traditional trade mark or is otherwise use in relation to goods and services, thereby satisfying a threshold requirement for all categories of trade mark infringement. To what extent can this context and surrounding materials mitigate against the likelihood of confusion? In certain circumstances, the context and manner of the defendant’s use can contribute to a finding of no likelihood of confusion. Where the claimant had registered the shape of a key as a mark and sold it under the ABLOY EXEC word mark, it alleged that the defendant’s similarly shaped key was infringing its mark (Figure 8.5).103

Figure 8.5 Senior shape mark (left); defendant’s allegedly infringing product shape (right); images from 13 June 2017, Case KKO:2017:42 (Supreme Court of Finland)

While the goods were identical and—at first blush—the two shapes looked very similar, the underlying functional elements of the claimant’s shape had to be kept in mind. The key head incorporated within Abloy’s mark was not materially different from key heads commonly used in the relevant market sector. It is particularly significant that patent protection in relation to Abloy’s locking system had expired. Accordingly, the scope of protection available was narrower for such a mark. The most distinctive part of the claimant’s mark was the diagonally placed mounting hole. As part of its overall assessment, the Supreme Court found 100 Ibid, [41]. 101 Ibid, [39]. 102 Ibid, [42]. The Haribo device mark was also found to be dissimilar by emphasising the visual dissimilarities, given that a bear motif was otherwise common ([52]–[53]). 103 Abloy v Hardware Group Finland (13 June 2017) Case KKO:2017:42 (Supreme Court of Finland); (2018) 4 GRUR Int 376.

Applying the Test 253 that the defendant’s mounting hole was oval and horizontal, while their key head also contained the EDGE mark. The Supreme Court therefore affirmed the lower court’s ruling that there was no likelihood of confusion. In essence, the functional nature of several elements led to limited distinctiveness which in turn led to a narrower scope of protection.104 The differences would outweigh the similarities. A similar approach has been taken—where the differences are sufficient to obviate confusion, when read in conjunction with the defendant’s packaging and word marks—in several cases relating to biscuits and confectionaries.105 In other circumstances, where the claimant is asserting rights in a shape mark, some courts have been less receptive to the argument that the defendant’s own word mark, which accompanies the use of a similar shape, can counteract any confusion as the following three examples illustrate. • The claimant Kraft Foods, was the proprietor of the CÔTE D’OR word mark for chocolates and confectionaries, as well as a Benelux shape mark for a chocolate bar characterised by three grooves on either side of the bar.106 The defendant Natrajacali sold a very similar chocolate bar under the BELGID’OR trade name and depicted this bar on the outer surface of its packaging. Despite dissimilar word marks, the visual similarity (they were nearly identical) of the defendant’s chocolate bar resulted in a likelihood of confusion. • Where the claimant’s three-dimensional mark involved the shape of the under- sole of a shoe, called ‘pelotas’ (balls) in Spanish due to their cobblestone effect, the defendant who manufactured shoes with a similar sole could not rely on a word element appearing on a small tab to prevent the likelihood of confusion, since the dominant and distinctive elements of the claimant’s mark had been reproduced.107 • An ‘omega’ or horse-shoe shaped three-dimensional mark registered by the fashion house Salvatore Ferragamo is known as the Gancini logo and used as a clasp on leather goods. Where the defendant adopted a visually similar clasp, it could not be shielded by the use of its own mark on leather goods since consumers could mistakenly think that the handbags belonged to a secondary collection by Ferragamo, or were the result of a formal collaboration between brands.108 104 Ibid, [30]–[36]. 105 Lindt v Riegelein Confiserie (n 88) (Where a competitor sold chocolate bunnies and Lindt asserted rights to its shape mark for gold foil covered chocolate rabbits, the word element of the Lindt mark was highly distinctive whereas the distinctiveness of the trade dress elements was low, given the fact that there were many similarly shaped bunnies on the market. Since there was no similarity as regards the highly distinctive elements (i.e. the words), but only similarity as regards the weakly distinctive trade dress elements (shape and colour), the court decided that the overall impression of the marks was dissimilar); Mondelez Italia, Générale Biscuit Glico France v Griesson de Beukelaer v Griesson de Beukelaer (26 June 2014) No. 27541/14 (Milan Tribunal of First Instance) (Three-dimensional mark for a biscuit in the form of a stick covered with chocolate and sold under the MIKADO brand not infringed since the defendant’s own biscuit packaging and trade marks would prevent confusion, while the shape of its biscuit was helicoid); Générale Biscuit Glico France, Mondelez France, Mondelez Europe v Solinest, Griesson De Beukelaer (2018) 1093 PIBD 302 (Paris Court of Appeal) (Similar reasoning, since the shapes were only weakly similar and the presence of word marks would prevent any likelihood of confusion). 106 Kraft Foods Belgium v Natrajacali (27 Jan 2015) 2010/AR/3340 (Brussels Court of Appeal); case comment in the Annual Review of EU Trade Mark Law (2016) 106(2) TMR 420, 567–568. 107 Camper v Kiowamoda (18 April 2015) Appeal No 1621/2013 (Spanish Supreme Court); case comment in the Annual Review of EU Trade Mark Law (2016) 106(2) TMR 565–567. 108 Salvatore Ferragamo v DC Brands International (9 May 2016) no. 5732/2016 (Milan Court of First Instance); see also Salvatore Ferragamo v Virginia s.r.l & Ors. (24 May 2018) No. 1539/2018 (Firenze Court of First Instance).

254 Non-Traditional Marks and the Likelihood of Confusion

5. Invalidation Counterclaims The final point to emphasise is a familiar one but nevertheless worth restating. From the defendant’s perspective, the best defence is often a good offence. Non-traditional marks appear to be especially susceptible to invalidation challenges, because of the additional absolute grounds which apply to them. Where rights to a non-traditional mark such as a pure colour or shape are asserted, junior users are likely to respond by challenging the validity of the mark on the basis that it results from the nature of the goods, or may be necessary to achieve a technical result, or adds substantial (aesthetic) value to a product—the three so-called policy exclusions.109 Perhaps the best known, albeit ultimately unsuccessful, challenge relates to Louboutin’s position mark for red-soled high- heeled shoes, which related to the issue of whether the mark added substantial aesthetic value to the product.110 When shape or colour marks are asserted against junior users, it is not uncommon to find invalidation challenges on the basis of policy exclusions.111 Such marks have also been challenged on the basis of lacking distinctiveness.112

109 EUTMR, Art 7(1)(e) (ex CTMR 2009, Art 4(1)(e)); TMD 2015, Art 4(1)(e) (ex TMD 2008, Art 3(1)(e)). 110 Case C- 163/16 Christian Louboutin SAS v Van Haren Schoenen BV, (12 June 2018) ECLI:EU:C:2018:423 (The CJEU’s reasoning is restricted to the question of whether the position mark was a ‘shape’ and therefore fit within the scope of the policy exclusions for shapes—they concluded that it didn’t. However the exclusions have now been expanded beyond shapes and apply to other ‘characteristics’.) 111 See, e.g., Revillon Chocolatier, Société Par Actions Simplifiée v Trianon Chocolatiers B.V. [2010] ETMR 16 (Court of Appeal of ‘s Hertogenbosch, The Netherlands) (A question on whether the shape added substantial value to the goods was referred to the CJEU but subsequently settled); Mars Inc v Joseph Deters [2015] ETMR 14 (Commercial Court of Brussels) (Invalidation on the basis of the shape producing a technical result unsuccessful). 112 See, e.g., Nivea-Blau (n 53) (unsuccessfully challenging acquired distinctiveness); Générale Biscuit Glico France v Solinest (n 105).

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The Confusion Test in European Trade Mark Law Ilanah Fhima and Dev S. Gangjee

Print publication date: 2019 Print ISBN-13: 9780199674336 Published to Oxford Scholarship Online: March 2021 DOI: 10.1093/oso/9780199674336.001.0001

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Index

The Confusion Test in European Trade Mark Law Ilanah Fhima and Dev S. Gangjee

Print publication date: 2019 Print ISBN-13: 9780199674336 Published to Oxford Scholarship Online: March 2021 DOI: 10.1093/oso/9780199674336.001.0001

(p.261) Index Note: For the benefit of digital users, indexed terms that span two pages (e.g., 52–53) may, on occasion, appear on only one of those pages. abbreviations conceptual similarity 64–65 and numbers 65–66 phonetic compared with aural similarity 41 abstraction conceptual similarity appropriate level of abstraction 44–45 figurative elements 56 level of conceptual similarity 44–45 future of confusion 12–13 intended purpose and uses of goods 110–12 non-traditional marks 64 nature of goods 109 acquired distinctiveness 147–53; advertising expenditure 149–50 causes of action 2 company materials 152 critical response where mark has reputation 139 defining 139–40 descriptive elements 142 duration of use 150 enhanced 147–48, 149, 150, 151, 153 evidence of 142, 148 foreign use and spillover reputation 152 goods sold 150–51 market share 150 role in assessing likelihood of confusion 135 Page 1 of 34

Index third-party references 151 turnover and sales 148–49; see also distinctiveness of marks actual confusion 184–87, 207 advertising acquired distinctiveness 149–50 “bait and switch” sales techniques 205, 206–7, 208–9, 223–24, 225–26 comparativesee comparative advertising identical or similar sign 214 infringement, triggering 209–10 initial interest confusion 205, 208–14, 216–17 keyword infringement for 6, 169–70 initial interest confusion 209–11, 212–13, 216–17 Internet context 25–26, 210–11, 212–13, 214 material or operative confusion 230 potential uses 216–17 sponsored advertisement 169–70 legitimate 214 non-traditional marks 232; see also Misleading and Comparative Advertising Directive aesthetic complementarity of goods 121–22 alcoholic drinks and aural similarity 19–20 non-traditional marks 235 shape marks 145 similarity of goods or services 108 allusive marks composite 92–93 descriptive elements 50–51 and distinctiveness 143–46 elements as weakly distinctive 93, 143–46 existence of similar marks on the market 146 letter combinations 145 numbers 144 shape marks 145–46 surnames 144; see also weak/weakly distinctive marks artificial intelligence 13 association commercial association economically linked undertakings 164–65 example 165 and indirect confusion 165–66 vs. mere association 164–65 mere association 6–7, 9, 162; vs. commercial association 164–65 attentiveness of consumer 177–80; category of goods in question 178–79 expensive purchases 179–80 hazardous goods 179–80 Page 2 of 34

Index (p.262) post-sale confusion 219, 227–28 transactional contexts 217–18, 220; see also consumer perception consumers/ relevant public aural similarity assessment 32 compared with conceptual or visual similarity 19–20 compared with phonetic similarity 31–42; abbreviations 41 common beginning 32–34 common central elements 35 common ending 35 descriptive elements, impact 39 device marks, impact 37–39 foreign terms 40–41 relationship with visual similarity and phonetic equivalents 31–32 reversal of verbal elements 41–42 syllables, same number 37 European Union Trade Marks (EUTMs) 177–78 likelihood of confusion, assessing 177–78 non-traditional marks 235, 245–46 shared endings 34 suffix of longer mark 34 ‘swallowed’ letterssee ‘swallowed’ letters Australia, non-traditional marks 232, 236–37, 238 average consumersee consumers/relevant public “bait and switch” sales techniques 205, 206–7, 208–9, 223–24, 225–26 Beebe, B. 11–12, 138–39 beginnings of marks/signssee common beginning beverages 19–20, 145; non-traditional marks 235 similarity of goods or services 108, 116 Bone, R. G. 138–39 Canon v Metro-Goldwyn-Mayer (Case C-39/97) distinctiveness of marks 136 goods goods/service factors, balancing 131 intended purpose and uses 113 one good an ingredient of another 126 same manufacturer or source 127 shared end users 114 similarity test 106–7 trade channels 124 likelihood of confusion, assessing 162–63 meaning of confusion 5, 7 mistaken belief 10 capitalisation different initial letter 36; with other features shared 22 junior and senior marks 25–26 Page 3 of 34

Index and similar fonts 27 visual similarity 27 categories of confusion 164–67; indirect confusion 165–66 causes of action applicable circumstances 1–2 background conditions for infringement 3–4 confusion as 1 defences 4 likelihood of confusion 1–2, 3, 104–5 overlap between 3 relative grounds and infringement, under 1–4 wrongful belief 7–8 characters Chinese 62 illegible 62 non-Roman 37–62 Roman 37 chocolates and confectionary allusive elements 93 likelihood of confusion, assessing 169, 189–90 non-traditional marks BOUNTY 241–42 composite marks 248–49 conflicts across categories 250–52 context of use 252–53 defendant’s mark, determining 237–38, 239–40, 241–42, 243, 244 FERERO ROCHER 240, 244 HARIBO 189–90, 250–51 LINDT 169, 189–90, 248–49, 250–53 MILKA 243 similarity of marks 245–46 similarity of goods or services 128 similarity of marks 64, 245–46 colours/colour marks composite marks 94–96 mere background use or commercial source 244–45 non-traditional marks 231–34, 242–45; decorative uses 243 dental impression material 242–43 pure colour, distinctiveness criteria 234 pharmaceuticals 247–48 secondary marks 244–45 commercial association 164–66; economically linked undertakings 164–65 example 165 (p.263) and indirect confusion 165–66 vs. mere association 164–65 common beginning Page 4 of 34

Index additional term in junior mark 33–34; examples 33–34 aural or phonetic similarity 32–33 partial identity 34 shared initial letters 32–33 common ending aural or phonetic similarity 35 ‘swallowed’ letters 36–37 Community Trade Mark (CTM) figurative elements 198, 202–3 initial interest confusion 208 invalidity 196 junior mark as 140–41 senior mark as 196 shapes 238–39 weak marks 197, 201–2 Community Trade Mark Regulation (CTMR) initial interest confusion 206–7, 208, 209 shapes 239 companies materials, acquired distinctiveness 152 names of, use with composite marks 98–103 comparative advertising EU acquis 209, 222 infringement 190, 209; defences to 4 materiality of harm 222 Misleading and Comparative Advertising Directive (MCAD) 4, 222, 225–26 competition, whether goods in 116–17; EUIPO Guidelines 117 not substitutable 116 physical form 116–17 prices 117 substitutable 116 complementarity of goods 117–24; aesthetic 121–22 associated services 120 bar code scanners 123 belief goods originate with same undertaking 122 CJEU jurisprudence 117–18, 120, 121 conference organisation 123 data communications services 123 definition 117 examples of goods deemed not to be complementary 119–20 examples of goods found to be complementary 118–19 functional 121, 122 GC judgments 117–18, 120, 121–22, 123–24 necessity 117–20; spurious necessity requirement 121–22 Page 5 of 34

Index pharmaceuticals 123 same manufacturer or source 129 shared public, need for 123–24; examples 123 video distribution services 123; see also goods similarity of goods or services composite marks 67–103; allusive elements 92–93 archetypical example 67 boundary between composite and non-composite marks 67–68 colour, impact 94–96 company and personal names, use with 98–103 defining 67–68 descriptive elements 87–91 distinctiveness vs distinctive and dominant elements 72–73 distinctive vs. dominant 73 particularly distinctive elements 93–94 domination of word or device element 78–85; figurative element complements verbal 85 figurative element dominates 81–85 neither dominates 85 verbal element dominates 78–81 ‘figleaf’ marks 91–92 figurative elements 52–53 font, impact 95–96 general principles 68–78; Matratzen case 69, 73, 77, 94 Medion case 70 overview 71 practical application 78–85 Shaker case 71, 74 unitary wholes 72 hybrids and combinations, in non-traditional marks 248–49 levels of importance in similarity analysis 73–75; dominant elements 73 elements with independent distinctive character 74, 75 negligible elements 74, 75 numbers 97–99 partial identity 77–78 positioning 95–97 ‘prägetheorie’ approach (German) 70 semantic content 75 size, impact 94–96 spacing 96–97 (p.264) verbal elements figurative element complements 85 figurative element dominates 81–85 similarity analysis 75 weak or weakly distinctive 91 Page 6 of 34

Index words and devices comparison of 86–87 domination of word or device element 78–85 conceptual similarity 42–66; abbreviations 64–65 abstraction, appropriate level 44–45 compared with aural or visual similarity 19–20 counteraction theory 46–48 descriptive elements 48–51 dictionaries, use of 43 foreign terms 58–61 graphical elements 51–57; abstract figurative elements 56 effect of a figurative elements in a composite mark 52–53 obscure figurative elements 56–57 pictures vs pictures 53–56 word vs picture 51–52 marks with a clear meaning 46–48 meaning, establishing 42–43 meaningless marks 46 misspellings 57–58 names 62–63 non-Roman characters 37–62 non-traditional marks 63–64, 251–52 numbers 65–66 obscure terms 58–61 one meaning rule rejected 43, 169–70 Scandinavian countries 177–78 signs 169, 200–1 single letters 65 Wikipedia, use of 43 confusionsee likelihood of confusion consumer perception 66, 103, 133; assessment of confusion driven by 19–20 aural, visual or conceptual similarity (relative importance) 19–20 common central elements 35 distinctiveness of marks 134–35, 139–40, 146, 154–56 end-users 176–77 existence of similar marks on the market 146 ‘figleaf’ marks 92 future of confusion 12–13 global appreciation approach 8–9 goods belief of origination with same undertaking 122 nature of 110 same manufacturer or source 127 similarity, balancing 132 graphical elements 52 initial interest confusion 219, 220 Page 7 of 34

Index likelihood of confusion, assessing 176, 181, 187–88 of mark as a whole 9 material or operative confusion 230 names 100 non-traditional marks 241 partial identity 78 pharmaceuticals 181–83 reputation of trade marks, critical response where 137–38, 139 shapes 243; see also consumers/relevant public consumers/relevant public abbreviation of marks by 41 analysis of marks and similarity 45 attentiveness, degrees of 177–80; category of goods in question 178–79 expensive purchases 179–80 hazardous goods 179–80 post-sale confusion 227–28 post-sale contexts 219 transactional contexts 217–18, 220 attributes of average consumer appraisals of fact 177–78 linguistic capabilities and degrees of attentiveness 177–80 specialised sub-categories 181–83 average consumer perspective 167–83; attributes of average consumer 177–83 constructing average consumer 172–75 consumers of goods in dispute 170 ‘hypothetical legal construct’ 168, 172, 173–74, 183 initial interest confusion, case against 215 linguistic capabilities 177–78 materiality 167 meaning of ‘average’ 174 ‘notional’ average consumer 12–13, 167 overlapping consumers 171 significant proportion threshold 168–69 statistical test, average consumer test not classed as 172, 174–75 taking into account all goods or services in question 170–71 categories or classes 175–77; same product 175 specialised sub-categories 181–83 (p.265) and conceptual similarity of marks 44 consumer protection law 209, 221–22, 223–24, 225–26 descriptive meaning known to 90–91 determining if overlap 114–15, 171 end consumers as users of goods 114 EU trade mark law 12–13 global appreciation approach 9, 172 goods or services in question 44, 110, 170 identifying relevant public 219 Page 8 of 34

Index imperfect recollection of earlier mark 17 lack of an objective image classification system known to 28 likelihood of confusion 168–71 linguistic capabilities 177–80 material or operative confusion 230 overlapping 171 processing of information 12–13 proportionality principle 172 responses, experimental methods to assess 12–13 shared 114–15 significant proportion threshold 168–69 subcategories of objects, unlikely to make fine distinctions between 44 taking into account all goods or services in question 170–71; see also consumer perception likelihood of confusion cosmetics/skin products distinctiveness of marks 146, 149, 151 likelihood of confusion, assessing 166, 181 non-traditional marks 243 similarity 111, 114–15, 125, 128 counteraction theory ambiguity of mark 48 analysis of marks by consumer 47–48 cultural figures 47 dictionary words 47, 48 inapplicable, where 47–48 and marks with clear meaning 46–48 rigidity of 48 Court of Justice of the European Union (CJEU) jurisprudence composite marks distinctiveness 72–73 figurative element dominates 81 general principles 68 Matratzen case 69 Medion case 70 names 102 overview 71 partial identity 77 Shaker case 71 unitary wholes 72 distinctiveness of marks 134–37, 159 acquired distinctiveness 147–48 critical response where mark has reputation 137–38 definitions 139–40 descriptive elements 142 inherently distinctive 141–42 junior marks 155–56 registrability and confusion assessment 141 timing of analysis 156, 157–58 weak and allusive 143, 144, 146 Page 9 of 34

Index likelihood of confusion, assessing 15; average consumer perspective 168–70, 174–75, 177–79, 181–82 categories of confusion 164–65, 166–67 causes of action 2–3, 4, 5 evidencing confusion 186–87 families of marks 194, 195 global appreciation/assessment 8–9, 161, 162–64 ‘likelihood’ standard 183 meaning of confusion 6–7 relative grounds vs. infringement 188–90 relevant grounds compared with infringement 10 weakly distinctive or elements of marks 198, 199–201, 203 materiality of harm 221 non-traditional marks 231, 234; composite marks 249 shapes 237–38, 241 similarity of marks 246–47 post-sale confusion 227, 228 similarity of goods or services 104; boundary between identical and similar 105–6 complementarity of goods 117–18, 120, 121 EUIPO Database Initiative for comparisons 133 shared marketing strategies 129–30 test, similarity of goods or services 106, 107 trade channels 124 users of goods 114 similarity of marks conceptual similarity 60–61, 65 importance of type 19 similarity for confusion and dilution compared 18 test 17, 18 visual similarity 25–26 timing of confusion, little guidance on 204–5; see also initial interest confusion postsale confusion timing of confusion (p.266) Court of Justice of the European Union (CJEU) jurisprudence, likelihood of confusion, assessing, relative grounds vs. infringement 192–94 CTMsee Community Trade Mark (CTM) cultural figures, counteraction theory 47 cumulation, likelihood of confusion 162–63 defences, infringement 4, 10 descriptive elements allusive marks 50–51 composite marks 87–91 conceptual similarity 48–51 defences to infringement 4 and distinctiveness 142–43 geographical 48–49, 50 junior marks, additional term 49–50 meaning known to relevant consumers 90–91 Page 10 of 34

Index phonetic and aural similarity 39 shared 21; see also composite marks similarity of marks device marks domination of word or device element in composite marks 78–85 impact 37–39 presence of letters in 28 senior mark as word and device mark 25–26 dictionaries conceptual similarity 43 dictionary words and contraction theory 47, 48 dilution of marks examples 2 non-traditional 249–50 similarity for, compared with confusion 18–19 distinctiveness of marks acquiredsee acquired distinctiveness aural similarity 32 ‘blurring’ or detriment 221 causes of action 2 CJEU jurisprudence 135–37 colour marks 234 composite marks distinctiveness vs. distinctive and dominant elements 72–73 distinctive vs. dominant elements 73 particularly distinctive elements 93–94 consumer perception 134–35, 139–40, 146, 154–56 context, relevance 142–43 critical response where mark has reputation 137–39 definitions 139–40 descriptive 142–43 distinctive and dominant elements distinctiveness vs. distinctive and dominant 72–73 distinctive vs. dominant 73 Matratzen case 69, 73, 77, 94 and overall distinctiveness 134–35 enhanced 2, 22–23; acquired distinctiveness 147–48, 149, 150, 151, 153 average consumer perspective 170–71 descriptive elements 142 inherently distinctive marks 142 non-traditional marks 243, 245–47 overall distinctiveness 134–35 relative grounds vs. infringement 189–90 role in assessing likelihood of confusion 135–36, 137 evaluation differing between registrability and confusion assessment 140–41 independent factor in confusion analysis 137 infringement vs registrability purposes, for 139–41 inherently distinctive 135, 137, 141–42 junior marks, ‘swamping’ concerns 155–56 Page 11 of 34

Index likelihood of confusion 9, 157 non-traditional marks 249 numbers 98 in practice 157–58 registrability purposes 139–41 role in assessing likelihood of confusion 135–37; Canon test 136 German jurisprudence 135–36 senior marks 11–12 ‘swamping’ concerns, junior marks 155–56 timing of analysis 156–58; when mark must be distinctive 156 Trade Mark Directive (TMD), 1988 137–38 in trade mark sense vs fame as a concept 153–55 United States 138, 139 weak and allusive 143–46 dominant elements aural similarity 32 distinctiveness vs. distinctive and dominant 72–73 distinctive vs. dominant 73 levels of importance in similarity analysis 73 double identity infringement initial interest confusion 210–11, 212–13 Internet context 6 meaning of confusion 6 similarity of goods or services 104–5 (p.267) endings of marks/signssee common ending EUIPOsee European Union Intellectual Property Office (EUIPO) European Union Intellectual Property Office (EUIPO) Boards of Appeal 11, 18; Grand Board 197 non-traditional marks 236, 245–47, 249 composite marks 73, 87–88, 90, 91; Guidelines 77, 92 Convergence Programme 91 distinctiveness of marks, evaluation of 140–41 goods complementarity of 120 goods/service factors, balancing 131 intended purpose and uses 111 nature of 110 users of 114–15 goods, boundary between identical and similar 105 Guidelines competition, whether goods in 117 complementarity of goods 120 composite marks 77, 92 goods/service factors, balancing 131 intended purpose and uses of goods 111 Page 12 of 34

Index method of use 115–16 nature of goods 110 non-traditional marks 245–46 similarity of marks 44, 52, 62–63 users of goods 114–15 nature of goods 109–10 nomenclature 15–16 non-traditional marks 234–35, 249–50; Boards of Appeal 236, 245–47, 249 Opposition Division (OD) 236, 246–48 similarity of goods or services 110, 133 trade mark image searches 13 weak/weakly distinctive marks 197–98 European Union Trade Mark Regulation (EUTMR), 2017 evidencing confusion 185–86 initial interest confusion 206 relative grounds vs. infringement 188–89 revisions 15–16 shared marketing strategies 130–31 similarity for confusion and dilution compared 18 similarity of goods or services, assessing 105–6 unfair advantage 225–26 European Union Trade Marks (EUTMs) attributes of average consumer 177–78 aural or phonetic similarity 177–78 categories of consumer 175–76 co-existence with national 141 descriptive elements 199 distinctiveness 141 evidencing confusion 185–86 foreign terms 59 likelihood of confusion, assessing 175–76, 177–78 litigation 177–78 meaningless marks 46 nomenclature 15–16 non-traditional marks 232, 250–51 senior marks 141 vulnerabilities 199–200; see also Community Trade Mark (CTM) national trade marks trade marks EUTMRsee European Union Trade Mark Regulation (EUTMR), 2017 EUTMssee European Union Trade Marks (EUTMs) evidencing confusion 184–88; absence of actual confusion 185 actual confusion 184–87, 207 in general 185–86 likelihood of confusion 184 signs 185 survey evidence 186–88 families of marks Page 13 of 34

Index junior marks 22–23 likelihood of confusion 194–95 senior marks 22–23, 194 signs 194 similarity 22–23 ‘figleaf’ marks 91–92 figurative elements abstract 56 categories of confusion 165 common geometric shapes 80 commonplace 80 in composite marks banal or decorative 79–80 effect 52–53 figurative element complements verbal 85 figurative element dominates 81–85 obscure 56–57; see also composite marks similarity of marks fonts composite marks 95–96 differences between 25–27 similarities between 27 visual similarity 26–27 (p.268) foods dairy products 108–9, 116–17, 125, 126, 128 dietetic 111 pet food 91, 114 supermarkets/department stores, sold in 125–26 supplements for medical purposes 112, 113, 114–15, 128; see also pharmaceuticals footwear 111, 121–22, 124, 129; likelihood of confusion, assessing 163–64, 170–71 foreign terms conceptual similarity 58–59, 60–61 phonetic compared with aural similarity 40–41 unlikely to be understood 58–59 foreign use 152 function of trade marks essential function, linked to likelihood of confusion 5 harm to (senior marks) 2 future recommendations in confusion analysis 11–14; artificial intelligence 13 ‘bigger picture,’ considering 12–13 consumer responses, experimental methods to assess 12–13 empirical analysis of law 11–12 identification and coding of relevant factors 11–12 machine learning 13, 14 GCsee General Court (GC) judgments General Court (GC) judgments composite marks Page 14 of 34

Index allusive elements 92 comparing words and devices 86 descriptive elements 87–88, 90 Matratzen case 69 names 101, 102 partial identity 77 practical application of principles 97–98 Shaker case 71 size and position 95 unitary wholes 72 verbal element dominates 78–79, 81 distinctiveness of marks acquired distinctiveness 147–48 existence of similar marks on the market 146 timing of analysis 157–58 in a trade mark sense vs fame as a concept 153–55 weak and allusive marks 144 initial confusion, in the UK 217–18, 220 likelihood of confusion, assessing average consumer perspective 168–69, 171, 177–78, 179–80, 181, 182–83 categories of confusion 166 ‘likelihood’ standard 184 weakly distinctive or elements of marks 199, 200–3 non-traditional marks 234–35, 245–46 similarity of goods or services 105–6; complementarity of goods 117–18, 120, 121–22, 123–24 intended purpose and uses of goods 111, 113–14 nature of goods 108–10 same manufacturer or source 127, 129 shared marketing strategies 130–31 test 106 trade channels 124 users of goods 114, 115 similarity of marks aural or phonetic 32, 33, 34, 36, 38–39, 40–41 conceptual 43, 44, 45, 51, 53, 60–61, 62–63, 64–66 families of marks 23 relative importance of type 19–21 visual 27–28, 30, 31; see also Court of Justice of the European Union (CJEU) jurisprudence Germany composite marks 70 distinctiveness of marks 135–36 non-traditional marks 234, 239–43, 244–45, 249 global appreciation approach 8–10, 161–64; average consumer perspective 9, 172 Canon test 162–63 CJEU jurisprudence 8–9, 161, 162–64 consumer perception 8–9 Page 15 of 34

Index meaning of confusion 8–10 multifactor test 161–62, 163–64 similarity of goods or services 104 similarity of marks or signs 17, 18, 19 UK courts 161–62 weak/weakly distinctive marks 199 word marks 23 goods advertising expenditure 149–50 beauty products/toiletries 90, 100, 125 beverages 19–20, 108, 116 bicycles 108–9, 113–14, 124 boundary between identical and similar 104–5 (p.269) Canon test goods/service factors, balancing 131 intended purpose and uses 113 one good an ingredient of another 126 same manufacturer or source 127 shared end users 114 similarity 106–7 trade channels 124 cleaning materials 111 clothing 111, 128 in competition, whether 116–17; not substitutable 116 prices 117 substitutable 116 complementarity of 117–24; aesthetic 121–22 associated services 120 belief goods originate with same undertaking 122 CJEU jurisprudence 117–18, 120, 121 definition 117 examples of goods deemed not to be complementary 119–20 examples of goods found to be complementary 118–19 functional 121, 122 GC judgments 117–18, 120, 121–22, 123–24 necessity 117–20 same manufacturer or source 129 shared public, need for 123–24 spurious necessity requirement 121–22 computer networks, programming services and websites 109, 111, 125 construction materials 109 consumer attentiveness 178–79 copycat products 229–30 cosmetics/skin products distinctiveness of marks 146, 149, 151 likelihood of confusion, assessing 166, 181 non-traditional marks 243 Page 16 of 34

Index similarity 111, 114–15, 125, 128 determining if consumers overlap 114–15, 171 duration of use 150 foods dairy products 108–9, 116–17, 125, 126, 128 dietetic 111 pet food 91, 114 supermarkets/department stores, sold in 125–26 supplements for medical purposes 112, 113, 114–15, 128 footwear 111, 121–22, 124, 129; likelihood of confusion, assessing 163–64, 170–71 intended purpose and uses of 110–14; complexity of 113–14 GC judgments 111, 113 junior and senior goods 111 level of abstraction 110–12 more than one potential purpose/use 113 overlap with nature of goods 109 pharmaceuticalssee pharmaceuticals junior and senior 5, 111 labelling of 172, 192–94, 215–16 leather 125 luxury 130–31, 229–30 market share 150 method of use 115–16 nature of 108–10; consumer perception 110 defining the goods 109 GC judgments 108–10 overlap with intended purpose 109 Nice classification system, limited role in assessing similarity of 105–6 objective nature of 110 one good an ingredient of another 126–27 originating with same undertaking, belief as to 122 packagingsee packaging pharmaceuticals 109–10, 112–13 physical nature and composition 108 print and online publications 111 sale of 150–51; and turnover 148–49 same manufacturer or source 127–29 senior and junior identical 2 shared ingredients 108–9 shared marketing strategies 129–31 shopping trolleys 112 trade channels 124–26 users 114–15; Canon test 114 end consumers 114 Page 17 of 34

Index EUIPO Guidelines 114–15 vinegar 111; see also similarity of goods or services graphical elements abstract elements/abstract figurative elements 28, 56 background 30 conceptual similarity 51–57 effect of a figurative elements in a composite mark 52–53 examples 28–30 (p.270) lack of an objective image classification system 28 obscure figurative elements 56–57 pictures vs pictures 53–56 purely graphic marks 28 single letters 65 stylisation 30 visual similarity 28–30 word vs picture 51–52 Greene, T. D. 138–39 gustatory/taste marks 231–32 Handler, M. 236–37 harm economic 221 materiality of 221–24 mental association between a reputed senior and junior mark 221 reputational 221 to senior marks 2 Hobbs, G. 42 holograms 231–32 identical elements boundary between identical and similar goods 104–5 dominance of 78 senior and junior marks 2, 3 three initial letters 20–21 word marks, with phonetic equivalence 32 identity of marks ‘double identity’ context 6 interpreting 3 partial 34 indirect confusion 5, 164–65; and commercial association 165–66 infringement, trade mark actual usage 189–90 advertising triggering 209–10 background conditions for 3–4 causes of action 1–4 compared with relative grounds 10–11; circumstances 162 likelihood of confusion, assessing 188–94 consumer linguistic capabilities and degrees of attentiveness 178 defences 4 Page 18 of 34

Index defendant’s use, specific context of 190–91 distinctiveness for 139–41 double identitysee double identity infringement keyword advertising 6, 169–70 non-traditional marks 63, 237–38, 249; policy arguments 217 public interest 234 vs registrability, distinctiveness 139–41 similarity test 8 threshold conditions 225 timing of distinctiveness analysis 156 inherently distinctive marks 141–42; role in assessing likelihood of confusion 135, 137 initial interest confusion advertising 208–14 “bait and switch” sales techniques 205, 206–7, 208–9, 223–24, 225–26 case against 215–26; doctrinal arguments 217–26 policy arguments 216–17 transient confusion 215–16, 219–20, 223–24 cautious approach 230 commercial use 208–9 Community Trade Mark Regulation (CTMR) 206–7, 208, 209 defining 167, 204, 205–6 divergence of opinion between High Court and Court of Appeal 204–5 doctrinal arguments 217–26; architecture of confusion test 217–20 changing the standard 224–25 controversy regarding 204–5 materiality of harm 221–24 recognising claims under a different heading 225–26 double identity 210–11, 212–13 initial interest confusionsee initial interest confusion Interflora judgment 211–14, 215–16 lack of guidance from the CJEU 204–5 and likelihood of confusion 167 likelihood of confusion criteria, satisfying 208 Och-Ziff Management v OCH Capital (2010) actual confusion 224 impact of 205–6, 207–11 materiality of harm 221–22, 223–24 status prior to 206–7 policy arguments 216–17 Recast Trade Mark Directive (TMD), 2015 206, 225–26 recognition 207–11 Trade Mark Directive (TMD), 1988 210, 225 in the United Kingdom 205–14; divergence of opinion between High Court and Court of Appeal 204–5, 206 in the United States 205, 208, 214; Page 19 of 34

Index (p.271) policy arguments 216; see also post-sale confusion timing of confusion initial letters common beginning 32–33 different, with other features shared 22 ‘swallowed’ 36 three, as identical 20–21 Intellectual Property Enterprise Court (IPEC) 180 interdependency principle, likelihood of confusion 162–63, 180 Interflora judgment, initial interest confusion 211–14, 215–16 International Trademark Association (INTA) 205 Internet context ‘double identity’ 6 keyword advertising 25–26, 210–11, 212–13, 214 likelihood of confusion 6 invalidation counterclaims, non-traditional marks 254 Japan, non-traditional marks 232 junior goods identical to senior 2 intended purpose and uses 111 mistaken for senior mark holder 5 junior marks additional term in 5; aural or phonetic similarity 33–34 descriptive elements 49–50 examples 33–34 as Community marks 140–41 distinctiveness and ‘swamping’ concerns 155–56 weakly distinctive 5 families of marks 22–23 font 25–26 materiality of harm 221 meaningless 46 reputation 166–67 and senior marks identical 2 identical or similar 2, 3 junior logical variant of 5 reproducing a distinctive element of 5 use without due cause 2; see also senior marks keyword advertisingsee advertising labelling of goods 172, 192–94, 215–16 Lemley, M. A. 7–8 letters central 36 combinations, weak and allusive marks 145 different central letters 36 end letters 36–37 Page 20 of 34

Index initial letters 36 end 36–37 initialsee initial letters order of 23 sequence of, word marks sharing 31 shared or differing, number of 23 single 65 small lettering differences 28 ‘swallowed’see ‘swallowed’ letters see also words/word marks likelihood of confusion architecture of confusion test 217–20 assessment of 160–203; allusive marks 91, 92 average consumer perspective 167–83 Canon test 162–63 case-by-case basis 101 categories of confusion 164–67 cumulation 162–63 distinctiveness of marks 139–40, 147–48, 155, 157 European Union Trade Marks (EUTMs) 175–76, 177–78 evidencing confusion 184–88 families of marks 194–95 global assessment 161–64 interdependency principle 162–63, 180 ‘likelihood’ standard 183–84 and registrability 140–41 relevant grounds compared with infringement 188–94 similarity of marks 104 timing of confusion 228 weak/weakly distinctive marks 195–203 average consumer appraisals of fact 177–78 attributes 177–83 categories or classes of consumers 175–77 constructing 172–75 linguistic capabilities and degrees of attentiveness 177–80 perspective of 167–83 or relevant public 168–71 specialised sub-categories 181–83 Canon v Metro-Goldwyn-Mayer (Case C-39/97) 5 categories of confusion 164–67 causes of action 1–2, 3, 104–5 (p.272) CJEU jurisprudence 135–37 commercial association, likelihood 164–65 context, relevance 188–94 controversial nature of 14–15 defining confusionsee meaning of confusion distinctiveness of marks 9, 135–37, 157 evidencing confusion 184–88; Page 21 of 34

Index actual confusion 184–87, 207 family of marks 194–95 future of confusionsee future recommendations in confusion analysis global appreciation/assessment 8–10, 161–64; Canon test 162–63 multifactor test 161–62, 163–64 UK courts 161–62 indirect confusion 164–66 initial interest confusion satisfying criteria 208 initial wording 211 junior and senior marks identical or similar 2 ‘likelihood’ standard 183–84 linked to essential function of a trade mark 5 machine learning, future role 14 material or operative confusion 167 meaning of confusionsee meaning of confusion mere inability to rule out insufficient 183 multifactor test 14–15 nomenclature 15–16 non-traditional marks 231 and non-traditional marks 231–54; conventional test applicable 234–36 determining defendant’s mark 236–45 post-sale confusion 167, 226–30 potential confusion, breadth of 5, 7–8 requirements 3–4 SABEL v Puma 6–7 between sign and trade mark 6–7 sponsorship confusion 164–65 sub-brand confusion 166 TMD 2015 160, 164–65 transient confusion 210, 215–16, 219–20, 223–24 weakly distinctive or elements of marks 195–203; see also future recommendations in confusion analysis similarity of marks likelihood of confusion, material or operative confusion 230 machine learning 13, 14 McKenna, M. 7–8 marketing, shared strategies 129–31 markssee trade marks materiality average consumer perspective 167 of harm 221–24 meaningless marks 46 meaning of confusion 5–8; applicable situations 7 Canon v Metro-Goldwyn-Mayer (Case C-39/97) 5, 7 diversion of trade 5 double identity 6 global appreciation 8–10 Page 22 of 34

Index indirect confusion 5 origin of goods or services in question 5 senior and junior users, mistake regarding 7 something other than commercial origin 6 in United States 7–8 wrongful belief 7–8 ‘wrong way round’ 7, 166–67; see also likelihood of confusion mere association 6–7, 9, 162; vs. commercial association 164–65 Misleading and Comparative Advertising Directive (MCAD) 4, 222, 225–26; see also advertising comparative advertising misspellings, conceptual similarity 57–58 motion marks 231–32 multimedia signs 231–32 mutual recognition principle, initial interest confusion 215 names company composite marks 98–103 senior company name and name in junior mark 102–3 conceptual similarity 62–63 defences to infringement 4 junior marks and senior company names 102–3 personal composite marks 98–103 defences to infringement 4 qualifiers 100–1, 102 surnames, weak and allusive marks 144 national trade marks co-existence with EUTMs 141 nomenclature 15–16 validity 140–41; see also Community Trade Mark (CTM) European Union Trade Marks (EUTMs) signs trade marks necessity, complementarity of goods 117–20; aesthetic necessity 121 spurious necessity requirement 121–22 (p.273) Nice classification system, limited role in assessing similarity of goods or services 105–6 non-confusing associations, causes of action 2 non-Roman characters 37–62 non-traditional marks advertising 232 anti-competitive effects, potential 232–33 aural similarity 235, 245–46 Australia 232, 236–37, 238 categories, conflicts across 249–52 chocolates and confectionary 240; BOUNTY 241–42 composite marks 248–49 conflicts across categories 250–52 Page 23 of 34

Index context of use 252–53 defendant’s mark, determining 237–38, 239–40, 241–42, 243, 244 FERERO ROCHER 240, 244 HARIBO 189–90, 250–51 LINDT 169, 189–90, 248–49, 250–53 MILKA 243 similarity of marks 245–46 colourssee colours/colour marks conceptual similarity 63–64, 251–52 conventional test applicable 234–36; applying 245–46 similarity of marks 245–48 defendant colours 242–45 consumer indifference presumption 241 context of use 236–37, 241, 252–53 determining mark of 236–45 manner of use 236–37, 238, 241, 252 preliminary issues 237–38 shapes 238–42 specific attributes of mark 241–42 determining defendant’s mark 236–45; colours 242–45 shapes 238–42 distinctiveness 249 embodiment of something else 64 Germany 234, 239–43, 244–45, 249 gustatory/taste 231–32 holograms 231–32 hybrids and combinations 248–49 infringement 63, 237–38 invalidation counterclaims 254 likelihood of confusion 231 and likelihood of confusion 231–54; conventional test applicable 234–36 determining defendant’s mark 236–45 marketing potential 232–33 motion marks 231–32 multimedia signs 231–32 olfactory/scent 231–32 overall impressions 235 phonetic similarity 245–46 policy concerns 233–34 position marks 231–32 shape markssee shapes similarity of 234–35, 245–48 Singapore 232 sound marks 232 tactile marks 231–32 Page 24 of 34

Index three-dimensional 206–7, 231–32 threshold enquiry (defendant’s mark) 236–45; fact-sensitive nature 245 on trade mark registers 232 United Kingdom 236, 238–39, 245–46 visual similarity 235, 245–46 numbers allusive marks 144 composite marks 97–99 conceptual similarity 65–66 distinctiveness 98 obscure marks figurative elements 56–57 terms 59–60 Och-Ziff Management v OCH Capital (2010) actual confusion 224 impact of 205–6, 207–11 materiality of harm 221–22, 223–24 status of initial interest confusion prior to 206–7; see also initial interest confusion Office for the Harmonisation of the Internal Market (OHIM) 15–16 olfactory/scent marks 231–32 one meaning rule, rejection 43, 169–70 overall impressions, trade marks average consumer perspective 173 composite marks 70 consumer perception 173 global appreciation approach 9 non-traditional marks 235 similarity of marks 9, 17, 173 packaging 206–7, 217, 219; ‘look-alike’ 217 non-traditional marks 237–38; colours 243–45, 251 external packaging 231–32, 240 plain packaging 232 shapes 241–42, 243, 252–53 word marks 240 pharmaceuticals 120, 123 third party ribbon 226 (p.274) parody 7–8 partial identity aural or phonetic similarity 34 composite marks 77–78 passing off, tort of 223–24 personal names, use with composite marks 98–103 pharmaceuticals central nervous system disorders 112 colour marks 247–48 complementarity of goods, shared public 123 Page 25 of 34

Index consumer perception 181–83 dermatological 112 general and specific purposes 112 intended purpose and uses of goods 112–13 medical and non-medical purposes 112–13 nature of goods 109–10 oncology 112 packaging 120, 123 same manufacturer or source 127–28 slimming products 112–13 trade channels 125 veterinary compared with human 112; see also foods goods phonetics equivalents 31–32 likelihood of confusion, assessing 177–78 non-traditional marks 235 phonetic compared with aural similarity 31–42; abbreviations 41 common beginning 32–34 common central elements 35 common ending 35 compared with equivalents 31–32 descriptive elements, impact 39 device marks, impact 37–39 European Union Trade Marks (EUTMs) 177–78 foreign terms 40–41 non-traditional marks 245–46 relationship with visual similarity and phonetic equivalents 31–32 reversal of verbal elements 41–42 ‘swallowed’ letterssee ‘swallowed’ letters syllables, same number 37 use of phonetic principles 40 pictures vs. pictures 53–56 vs words 51–52 positioning, composite marks 95–97 position marks 231–32 post-sale confusion 167, 226–30; cautious approach 230 defining 204 post-sale audience 228; see also initial interest confusion pre-purchase confusion 205; see also initial interest confusion proportionality principle 172 public, relevantsee consumers/relevant public Recast Trade Mark Directive (TMD), 2015 distinctiveness 135, 139–40 initial interest confusion 206, 225–26 likelihood of confusion, assessing 160, 164–65; relative grounds vs. infringement 188–89 Page 26 of 34

Index nomenclature 15–16 referential use, defences to infringement 4 Registered Community Design (RCD) 235 registration of trade marks absolute ground objections 202–3 confusion assessment 140–41 description of goods on 107–8 distinctiveness and registrability 139–41 font 25–26 legal aspects 6 marketing, shared strategies 130 non-traditional marks 232 practices of different registries 11 searches by registries 13 timing of distinctiveness analysis 156 UK Trade Mark Registry 165–66, 172, 214, 224, 228–29 weak/weakly distinctive marks 197 relative grounds analysis causes of action 1–4 contextual limitations 190 relevant grounds compared with infringement 10–11; circumstances 162 likelihood of confusion, assessing 188–94 relevant publicsee consumers/relevant public reputation of trade marks causes of action 2 critical response where 137–39 enhanced 135, 152; examples 153 harm to 221 junior marks 166–67 likelihood of confusion 9 senior marks 2 spillover reputation and foreign use 152 Roman characters 37 SABEL v Puma (Case C-251/95) categories of confusion 164 (p.275) composite marks 67–68, 87–88 descriptive elements 87–88 direct and indirect confusion 5 distinctiveness of marks 135, 157 likelihood of confusion concept 6–7, 161 similarity of marks test 17, 66 search companies 13 senior goods identical to junior 2 intended purpose and uses 111 senior marks distinctiveness 11–12, 134–35 Page 27 of 34

Index families of marks 22–23, 194 goods of holder, junior goods mistaken for 5 harm to function 2 and junior marks identical 2 identical or similar 2, 3 logical variant of senior 5 reproducing distinctive element of senior 5 materiality of harm 221 meaningless 46 reputation 2 similarity of goods or services 106 third-party references 151 word and device marks, as 25–26 word marks, as 25–26, 69 word vs picture 51; see also junior marks servicessee similarity of goods or services shapes allusive elements 145–46 ‘bare’ shape-marks 240–41 common geometric 80 consumer perception 243 conventional test applicable 236 infringement precondition 240 non-traditional marks 231, 238–42 weak/weakly distinctive marks 145–46; see also three-dimensional trade marks signs beginnings of 20–21, 32 conceptual similarity 169, 200–1 defendant’s mark, determining 237–38 endingssee common ending evidencing confusion 185 families of marks 194 global appreciation approach 17, 18, 19 identical or similar 214 language of 177–78 length of 31 likelihood of confusion 6–7, 163–64 multimedia 231–32 word marks 23; see also European Union Trade Marks (EUTMs) national trade marks trade marks similarity of goods or services absence of, confusion not found in 11–12 balancing of factors 131–32 boundary between identical and similar goods 104–5 Canon test 106–7; compared with USA 107 intended purpose and uses of goods 113 level of similarity 106 Page 28 of 34

Index relevant factors 106, 107 senior marks 106 users of goods 114 disclaimers 132–33 EUIPO Database Initiative for comparisons 133 factors 108–31; competition, whether goods in 116–17; complementary, whether 117–24 goods or services, balancing similarity of 131–32 intended purpose and uses of goods 110–14 method of use of goods 115–16 nature of goods 108–10 one good an ingredient of another 126–27 same manufacturer or source 127–29 shared marketing strategies 129–31 trade channels 124–26 users of goods 114–15 Nice classification system, limited role 105–6 Polaroid test, US 107, 138 question of law or of fact 107–8 services offered through same channel 125 sold in different shops 125 specialist shops 124–25 United States 107; see also goods similarity of marks 17–66; art or science 66 aural, visual or conceptual (relative importance) 19–20 beginnings of marks/signs 20–21, 32 case-by-case basis, analysed on 21 different initial letter only 22 European Union trade mark (EUTM) Regulation 18 families of marks 22–23 global appreciation 17, 18, 19 initial non-shared element descriptive 21–22 levels of importance, composite marks 73–75; dominant elements 73 (p.276) elements with independent distinctive character 74, 75 negligible elements 74, 75 no guarantee of 21–22 non-traditional marks 234–35, 245–48 overall impressions, assessed by 9, 17, 173 SABEL v Puma test 17, 66 shared descriptive elements 21 similarity for confusion and dilution compared 18–19 test 17–18 three initial letters identical 20–21; see also aural similarity conceptual similarity phonetic similarity visual similarity Singapore, non-traditional marks 232 single letters 65 Page 29 of 34

Index size of marks 94–96 Small and Medium-sized Enterprises (SMEs) 8 sound marks 232 spacing composite marks 96–97 visual similarity 27–28 spillover reputation 152, 166–67 stylisation 30 sub-brand confusion 166 surnames, weak and allusive marks 144 survey evidence 186–88 ‘swallowed’ letters 35–37; ‘buried’ in middle of mark in question 35 different central letters 36 different end letters 36–37 different initial letters 36; see also aural similarity phonetic similarity syllables, same number 37 tactile marks 231–32 taste marks 231–32 technical terms 59–60 tests relevant to confusion architecture of confusion test 217–20 Canon test 106–7; compared with USA 107 intended purpose and uses of goods 113 level of similarity 106 relevant factors 106, 107 senior marks 106 users of goods 114 causes of action 1–2 non-traditional marks (conventional test applicable) 234–36 Polaroid test, US 107, 138 SABEL v Puma test see SABEL v Puma (Case C-251/95) similarity of goods or services 106–7 similarity of marks 17–18 third-party references 151 three-dimensional trade marks context of use 253 conventional test applicable 235 defendant’s mark, determining 236–37, 239 in the EU 232 initial interest confusion 206–7 partially technical 234 policy concerns 233 rise of 232 validity 239; see also non-traditional marks shapes timing of confusion 204–30; conventional assumption in trade mark law 204 initial interest confusionsee initial interest confusion Page 30 of 34

Index material or operative confusion 167, 230 post-sale confusion 226–30 timing of distinctiveness analysis 156–58; when mark must be distinctive 156 trade channels, goods 124–26 Trade Mark Directive (TMD) distinctiveness, role in assessing likelihood of confusion 136–37 original (1988) distinctiveness, role in assessing likelihood of confusion 137–38 initial interest confusion 210, 225 nomenclature 15–16 Recast (2015)see Recast Trade Mark Directive (2015) updated (1995) 15 trade mark law average consumer in EU law 12–13 demanding nature of field 13 empirical analysis 11–12 question of law or of fact 107–8 timing of confusion 204; see also initial interest confusion post-sale confusion timing of confusion trade mark protection average consumer perspective 173 enhanced 134, 153–54; critical response where mark has reputation 137–39 font 25–26 likelihood of confusion, assessing 160, 191, 195–96 traditional rationale for 1 trade marks ambiguity 48 (p.277) beginnings of marks/signs 20–21, 32 clear meaning 46–48 complexity of 13–14 distinctivenesssee distinctiveness of marks empirical analysis of law 11–12 essential function, linked to likelihood of confusion 5 in the EUsee European Union Trade Mark Regulation (EUTMR), 2017 European Union Trade Marks (EUTMs) families of 22–23; likelihood of confusion 194–95 functionsee function of trade marks identity, interpreting 3 meaningless 46 merely evocative or suggestive of meaning 47 national co-existence with EUTMs 141 nomenclature 15–16 UK trade marks (UKTMs) 239 validity 140–41 non-traditionalsee non-traditional marks Page 31 of 34

Index overall impressions average consumer perspective 173 composite marks 70 consumer perception 173 global appreciation approach 9 non-traditional marks 235 similarity of marks 9, 17, 173 protectionsee trade mark protection registrabilitysee registrability and distinctiveness reputationsee reputation of trade marks similaritysee similarity of marks in the UK 175–76 weak and allusive 143–46; see also allusive marks Community Trade Mark (CTM) composite marks device marks likelihood of confusion shape marks signs trade mark law trade mark protection transient confusion case against initial interest confusion 215–16, 219–20, 223–24 recognising initial interest confusion 210; see also actual confusion initial interest confusion turnover and sales, acquired distinctiveness 148–49 unfair advantage causes of action 2, 3 EUTMR 225–26 Unfair Commercial Practices Directive (UCPD) 222 unfair competition 6 unitary wholes, composite marks 72 United Kingdom Canon test, similarity of goods or services 106 colour marks 232–33 complementarity of goods 117–18 composite marks, descriptive elements 89 distinctiveness of marks 147, 152, 157–58 ‘figleaf’ marks 91 initial interest confusionsee initial interest confusion Intellectual Property Office (IPO) 11 Manual of Trade Marks Practice 132–33 likelihood of confusion assessing 161–62 one meaning rule, rejection 43, 169–70 non-traditional marks 236, 238–39, 245–46 relative grounds vs. infringement 10 spillover reputation 166–67 Trade Mark Act 1938 224 Trade Mark Registry 165–66, 172, 214, 224, 228–29 UK trade marks (UKTMs) 175–76 United States composite marks 68 distinctiveness of marks 138, 139 doctrine of legal equivalents 52 Page 32 of 34

Index future trends in confusion analysis 11–13 initial interest confusion 204–5, 208, 214 policy arguments 216 meaning of confusion in 7–8 non-traditional marks 232 similarity of goods or services 107 wrongful belief 7–8 verbal elements composite marks figurative element banal or decorative 79–80 figurative element complements verbal 85 figurative element dominates 81–85 verbal element dominates 78–81 reversal, aural and phonetic similarity 41–42; see also letters words/word marks visual similarity clothing 19–20 compared with aural or conceptual similarity 19–20 compared with aural or phonetic similarity 31–32 comparing words and devices 86 font 26–27 graphical elements 28–30 (p.278) length of signs 31 non-traditional marks 235, 245–46 small lettering differences 28 spacing 27–28 words 23–25; see also similarity of marks weak/weakly distinctive marks and allusive marks 143–46 composite marks 91 examples 143 existence of similar marks on the market 146 junior marks 5 letter combinations 145 likelihood of confusion 195–203 non-traditional 249 numbers 144 shape marks 145–46 Starbucks dispute 196 surnames 144; see also allusive marks Weatherall, K. 12–13 Wikipedia, use of 43 Wilkerson, J. 138–39 words/word marks conflicts across categories 249–50 and device element, in composite marks comparing words and devices 86–87 domination of word or device element 78–85 examples 23–25 general structure of two signs 23 Page 33 of 34

Index global appreciation 23 identical verbal element 25 looking different, with phonetic equivalents 32 non-traditional 249–50 number of shared or differing letters 23 order of letters 23 vs pictures 51–52 positioning of different or shared elements 23 presence of letters in 28 senior marks 25–26 sequence of letters, sharing 31 slang words 58 visual similarity 23–25 word and device mark, senior mark as 25–26; see also letters World Intellectual Property Organization (WIPO) 13 ‘wrong way round’ confusion 7, 166–67

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