Likelihood of Confusion in Trade Mark Law: A Practical Guide to the Case Law of EU Courts

Likelihood of Confusion in Trade Mark Law provides a complete overview of the case law of the General Court and Court of Justice of the European Union on the risk of confusion in trade mark law. The primary purpose of trade mark law is to prevent unfair competition by applying tests for infringement of the trade mark and by providing rights and remedies to the owner of the trade mark. However, since 1994, European Union (EU) case law on trade mark confusion has become so diverse and has grown so much that it is difficult to see the wood for the trees. This is the first book to give a complete synthesis of the more than thousands of decisions that have been handed down over the past decades, illustrated with many examples and images.

What’s in this book: Providing a highly structured and complete overview of the confusion test and all assessment criteria as determined by the General Court and Court of Justice, the authors unravel the concept of likelihood of confusion and establish a sound and thorough methodology for resolving confusion in any trade mark case. Among the practical features offered by the analysis are the following:

• consideration of the constituent criteria of the confusion test through a simple three-step test that examines the similarity among goods and services, similarity between different trade marks and global appreciation of confusion
• the identification of the ‘relevant consumer’, including from territorial and linguistic points of view guidance on procedural aspects of the confusion test before the EU courts, as well as before the EU
• Intellectual Property Office and its Boards of Appeal
• identification of the dominant and distinctive components of a trade mark: phonetic, visual and conceptual
• the concept of similarity and the Nice Agreement
• the principle of ‘partial use’
• effect of the terms of sale of the goods or services
• consideration of the existence of a family or series of trade marks, and
• consideration of the effects of coexistence on the confusion test

How this will help you: The book provides an overview of the main principles and guidelines that EU Courts have set out over time and will help practitioners dealing with trade mark confusion in infringement proceedings before EU or national courts, or in opposition proceedings before national offices or the EU Intellectual Property Office, to approach each case with full awareness of applicable criteria of assessment. This much-needed synthesis of case law will quickly become a standard reference work among lawyers, examiners and judges acting in trade mark matters.

Preface

CHAPTER 1

Introduction to Trade Mark Law Confusion and the EU Trade Mark System

CHAPTER 2

General Principles Applying to the Confusion Test

CHAPTER 3

The Relevant Public

CHAPTER 4

The Constituent Criteria of the Confusion Test: A Balanced Three-Step Test

CHAPTER 5

Confusion with the Well-Known Mark under Article 6bis Paris Convention

CHAPTER 6

Consent and Co-existence of Trade Marks

CHAPTER 7

The Unitary Character of Court Orders under the EU Trade Mark Law