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Confused with the likelihood of confusion?

Written by Samuel O'Toole on 10 October 2018

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Section 5(2) of the Trade Mark Act 1994 (the Act) provides:

“A trade mark shall not be registered if because—

(a)   it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or

(b)   it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.” (emphasis added)

This section is almost identical to the provision for trade mark infringement found in section 10(2) of the Act. Assessing the similarity of two marks is relatively straightforward and so is the assessment of similarity for goods and services, in essence they are either similar – or they are not.

However, what often throws a spanner in the work is assessing the all elusive “likelihood of confusion on the part of the public”. This is a requirement for both a section 5(2) trade mark opposition and a section 10(2) trade mark infringement action. The case of Sabel v Puma [1997] E.C.R. 1-6191 confirmed that:

Article 4(1)(b) of the Directive (which is the EU provision of Section 5(2)) is designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, ‘there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark’.

There is an abundance of case law that can help us to decipher what exactly a likelihood of confusion is, in essence this is:

The likelihood of confusion must be globally assessed and it must take into account all relevant factors of the case. It must be judged through the eyes of an average consumer, as opposed through the eyes of a lawyer.

This average consumer will not analyse each individual element of the mark, rather he/ she will assess the mark as a whole. The theoretical individual will look at the visual, aural and conceptual similarities of the marks and the overall impression that the mark makes.

If the earlier mark is of a highly distinctive character there will be a greater likelihood of confusion. It should be noted that the reputation of a mark alone will not allow a presumption of a likelihood of confusion to be inferred.

The goods and services of the marks should also be analysed; if highly similar it will result in a greater likelihood of confusion and this is also true in reverse.

An association of the two marks is not sufficient. There must be an association between the two marks that causes an individual to believe that the goods or services come from the same or economically-linked undertakings.

In the case of Canon Kabushiki Kaisha v MetroGoldwynMayer Inc [1999] F.S.R. 332 the Court of Justice stated 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

Still confused about confusion? Speak to Lawdit; we can assist you with assessing the likelihood of confusion in your trade mark opposition or infringement matter.  

If you'd like to know more about this article please send an email to Michael Coyle quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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