European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

The protection afforded by the trade mark also makes it possible to prevent a third party from using a similar sign provided that there is a likelihood of confusion between the mark and the sign, and the goods or services covered (Directive No 2015/2436, recital 16) . Article 10(1)(b)  of Directive No 2015/2436 thus provides that the proprietor of an exclusive right may prevent any third party fro …

Right to prevent the use of a sign for similar goods or services

The protection afforded by the trade mark also makes it possible to prevent a third party from using a similar sign provided that there is a likelihood of confusion between the mark and the sign, and the goods or services covered (Directive No 2015/2436, recital 16) . Article 10(1)(b)  of Directive No 2015/2436 thus provides that the proprietor of an exclusive right may prevent any third party from using any sign where “the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered, if 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”. Evidence of a likelihood of confusion is required where there is similarity on either the trade mark or the goods or services it designates. 

As a factual issue, similarity falls within the discretion of trial courts, which must take account of all the relevant factors relating to those goods or services, such as their nature, their intended purpose and their use, and whether they are in competition with each other or are complementary . The fact 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 . The existence of likelihood of confusion is appreciated globally by taking into account all the factors relevant to the circumstances of the case at the time when use was commenced of the sign which infringes the trade mark and not at the time when the court delivers its ruling . In order to assess the degree of existing similarity between the marks concerned, the national court must determine their degree of visual, aural and conceptual similarity and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed . A sign made up of two terms and a sign made up of a word alone may be visually similar . A sign made up of two terms in which only one of the terms is identical with the registered trade mark may generate a likelihood of confusion if the mark has an independent distinctive role in the composite sign . On the other hand, a mere conceptual similarity between trade marks is not sufficient to create a likelihood of confusion. In this case, the European Court requires the earlier trade mark to have a particularly distinctive character either per se or because of the reputation the mark enjoys with the public .

Furthermore, the appreciation of the likelihood of confusion does not only depend on the degree of similarity between the trade mark and the sign, but also on the ease with which the sign may be associated with the mark having regard to the recognition of the latter on the market which has an influence on the number of operators who will want to use similar signs. The figurative three-stripe Adidas trade mark cannot therefore be mixed up with a two stripe mark of a competing sport garment manufacturer . Likewise, the use in a lawful comparative advertising of a sign similar to the mark of a competitor of the advertiser does not give rise to a likelihood of confusion given that the need to promote comparative advertising requires that the right conferred by the mark be limited to a certain extent .

Under the same terms as Directive No 2008/95, recital 11.

In substance the same as Article 5(1)(b) of Directive No 2008/95.

Case C-533/06 O2 Holdings ET O2 (UK) [2008] ECR I-4231, LawLex200900001037JBJ.

Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [1998] ECR I-5507, LawLex200900000647JBJ. See, also, on the basis of the regulation on the Community Trade Mark: T-85/02 Díaz v OHIM - Granjas Castelló [2003] ECR II-4835 (similarity of condensed milk and cheese); T-164/03 Ampafrance v OHIM - Johnson & Johnson (monBeBé) [2005] ECR II-1401) (similarity of babies' napkins of absorbent coton and skin care and body care preparations, cosmetic preparations); T-278/04 Jabones Pardo v OHIM - Quimi Romar (YUKI) [2006] ECR II-90, Summ.pub. (similarity of sanitary preparations and perfumes); T-336/03, which specifies that goods and services may be complementary, "in the sense that, for example, the maintenance of the goods complements the goods themselves, or that services may have the same purpose or use as the goods, and thus compete with each other"; T-161/07, which considers that "although "beers" and "services for discos, night clubs" differ by their nature and commercial origin, a low degree of similarity between the goods and services in question cannot be denied given the complementary relation".

Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [1998] ECR I-5507, LawLex200900000647JBJ.

Case C-145/05 Levi Strauss [2006] ECR I-3703, LawLex200900000572JBJ.

Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, LawLex200900000406JBJ.

Case T-112/03 L'Oréal v OHIM - Revlon (FLEXI AIR) [2005] ECR II-949, rendered on the basis of the regulation on the Community trade mark.

Case C-120/04 Medion [2005] ECR I-8551, LawLex200900000409JBJ, (use by Thomson, in the composite sign "Thomson Life", of the registered trade mark Life, of which Medion is the proprietor). The Court specifies that "the finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark".

Case C-251/95 SABEL v Puma, Rudolf Dassler Sport [1997] ECR I-6191, LawLex200900000939JBJ, regarding the concept of "bounding feline" and the trade mark Puma.

Case C-102/07 Adidas and Adidas Benelux [2008] ECR I-2439, LawLex200900000313JBJ, which specifies in this case that "the public's perception that a sign is a decoration cannot constitute a restriction on the protection conferred by Article 5(1)(b) of the directive when, despite its decorative nature, that sign is so similar to the registered trade mark that the relevant public is likely to perceive that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings"; See also C-425/98 Marca Mode [2000] ECR I-4861, LawLex200700001649JBJ, which considers that the reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion simply because of the existence of a likelihood of association in the strict sense. 

European Business Law

242. Right to prevent the use of a sign for similar goods or services

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242. Right to prevent the use of a sign for similar goods or services

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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