Likelihood of Confusion & Bad Faith. Hugh O Neill 29/06/2015

Transcription

1 Likelihood of Confusion & Bad Faith Hugh O Neill 29/06/2015

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3 Structure: 1. Likelihood of Confusion ( LoC ) a) Legal Provisions b) General Remarks c) Comparison of goods and services d) Comparison of signs e) Distinctiveness f) Relevant public / degree of attention g) Global assessment 2. Bad Faith a) Legal Provisions b) Typical cases c) Misappropriating rights of others d) LINDT (C-529/07) e) OHIM Practice f) Final Remarks Guidelines

4 Legal Provisions Article 16(1) TRIPS: The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.

5 Legal Provisions Art. 8(1)(b) CTMR: A CTM application shall not be registered if 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 in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association.

6 Legal Provisions 8 th recital of the CTMR: the appreciation of likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and the goods or services identified

7 General remarks Case C-251/95, Sabèl, Case C-39/97, Canon, Case C-342/97, Lloyd

8 General remarks Confusion about what? There is a likelihood of confusion where the public can be mistaken as to the origin of the goods and services in question. It constitutes a likelihood of confusion if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings. C-39/97 Canon

9 General remarks Direct Confusion Risk that the public will confuse the marks directly by mistaking one for the other NOVALLOY vs NOVALOY Indirect confusion Distinguish between the marks, but may believe that they from the same undertaking or economically-linked undertakings Citibank, Citigold, Citibond vs Citigate (due to the family of Citi + marks).

10 General remarks How is Likelihood of confusion assessed? Sabèl (C-251/95): The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. [para. 22] 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. [para. 23] A mere likelihood of association between two marks is not equal to a likelihood of confusion. [para. 26]

11 General remarks How is Likelihood of confusion assessed? Lloyd (C-342/97): 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 [para. 26]

12 General remarks How is Likelihood of confusion assessed? Compare goods & services Compare signs: visually aurally conceptually Distinctive & dominant elements of the marks Global Assessment Relevant public and degree of attention Distinctiveness of the earlier mark

13 Comparison of goods/services Similarity - Canon (T-39/97) Nature what is it? Purpose what need do they satisfy? Method of use how are they used? Complementary goods/services essential or significant link. Competitive / interchangeable goods/services. Channels of distribution. The relevant public. The usual origin of the goods/services.

14 Comparison of goods/services Practical approach of Opposition Division Is a comparison required? Database on the comparison of goods/services must be consulted and is binding upon examiners (Ex-post checks). It gives the following results: Common Tool on Similarity of Goods and Services.

15 Comparison of signs Sabèl (C-251/95): In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

16 Comparison of signs Visually What do you see? DEPILA Aurally What do you hear? CLIO vs KLEEO Conceptually What does it mean? ELEPHANT

17 Distinctive - dominant elements Dominant and distinctive elements Distinctiveness of the earlier mark

18 Relevant public / degree of attention General Public General Public Professional Public Professional Public

19 Level of purchase involvement: Relevant public / degree of attention Low degree of attention High degree of attention

20 Global assessment Beginning of marks the first part is generally the one that primarily catches the consumer s attention Imperfect recollection Method of purchase Visual clothing. Aural phone contracts, drinks. Short signs Up to 3 letter/number signs. Names/surnames Family of marks proof of use of a number of marks capable of constituting a series. CTMA not only be similar to the marks belonging to the series, but also display characteristics of the series LoC in part of the relevant territory suffices (e.g. Englishspeaking consumer)

21 Global assessment Similarity Signs / G&S Distinctiveness

22 Bad Faith OHIM Practice

23 Art. 52(1)(b) CTMR Absolute grounds for invalidity A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (b) where the applicant was acting in bad faith when he filed the application for the trade mark

24 INVALIDITY - AG - BAD FAITH Bad faith Purpose: to prevent applications made with fraudulent or abusive ends: misappropriation of the rights of others; misuse of the trade mark system. The goal of the CTM owner when he applied for the trade mark was not to protect its trade mark according to its essential function, but to use it as a weapon or tool to achieve other ends.

25 INVALIDITY - AG - BAD FAITH Bad faith: Bad faith: typical cases cases Misappropriation of the rights of others - previous relation which imposes a duty of fair play, intention to exclude from the market, to exploit reputation). Knowledge of the earlier sign alone is not enough. Misuse of the trade mark system hoarding of famous trade marks, repeated applications to elude the use requirement, deceptive information given to OHIM.

26 Examples of misappropriations Relations and circumstances which may give rise to fair play: Contractual relations Pre-contractual relations Circumstances after a contract has been terminated E.g.: Distributors, employers, shareholders, former board members. In competition If the application is solely made to prevent others from using the mark. If the application solely involves exploiting the prior rights of others.

27 Misappropriations of the rights of others? NEW KIDS ON THE BLOCK 2943 C Former manager (CTM proprietor) applied for the CTM in order to use the name with new members. CTM proprietor still received royalties from record sales etc. under prior agreement.

28 Misappropriations of the rights of others? HULKAMANIA 3429 C An English company applied to registered HULKAMANIA as a CTM. The holder opposed Hulk Hogan s attempt to register HULKAMANIA, and offered to sell its registration.

29 INVALIDITY - AG - BAD FAITH BAD FAITH: LINDT (C-529/07) An overall assessment, taking into consideration inter alia the following factors: The applicant s knowledge; The applicant s intentions in filing the mark; The prior rights of the parties.

30 OHIM practice Important factors in OHIM s evaluation of bad faith The applicant s knowledge: The applicant knows or must have known of the use of an identical or confusable mark. The applicant s intention: Any circumstances which may point toward bad faith? Even considering this: does the applicant have a legitimate objective or interest in pursuing the application? The prior rights of the parties: The degree of legal protection of any prior rights of the third party and the applicant must also be considered.

31 INVALIDITY / ABSOLUTE GROUNDS BAD FAITH OHIM practice Article 52(1)(b) CTMR BAD FAITH Burden of proof is on the invalidity applicant Relevant point in time is the application date of the contested CTM Difficulty: to establish a subjective factor, namely the bad faith intention, with objective circumstances T-321/10 Gruppo Salini When Bad Faith is established, the WHOLE CTM is declared invalid, even for goods and services that are unrelated to those protected by the invalidity applicant s mark

32 5280 C CHINT ESPAÑA 5281 C GCE CHINT 5282 C MATERIAL ELÉCTRICO CHINT, S.A. c/ Sierra Morena, Nave 3 Pol. La Vega ES Fuenlabrada Spain CHINT GROUP CORPORATION High Tech Industrial Zone North Baixiang Wenzhou Zhejiang Province People s Republic of China

33 Final Remarks Initially: Bad faith under misappropriation could only arise if there were contractual relations between the parties. After Lindt: Bad faith can also apply where the parties are in competition. Lindt establishes that knowledge is not sufficient for finding bad faith: the intention of the CTM proprietor are very important. Bad faith is often justified based on whether the CTM proprietor has proven that he has legitimate goals or interests or not. Fair play and loyalty is very important when considering bad faith in contractual relations. Reputation is an important factor, in particular when there are no contractual relations between the parties.

34 The End