For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation
by Louis Louembé, Pierre Massot, and Mythili Thaya
What is similarity between signs? If no one asks us, we know what it is. If we wish to explain, to him who asks when elements of resemblances are sufficient for a sign to be considered similar to a trade mark with reputation, we find it far more difficult! This is the paradox of trade mark lawyers put in the words of Saint Augustine (surely for a more philosophical question). Although more practical, the question of the similarity of signs is of the utmost importance to defend efficiently trade marks with reputation against free-riding.
Indeed, when a trade mark is well-known, it is sufficient for the sign in dispute to repeat a characteristic element of the trade mark with reputation, however minor it may seem, to trigger a mental association with it, as demonstrated in the famous "Master" case (judgment of 11 December 2014, Coca-Cola, T-480/12). It is therefore important to have a method of assessing similarity between signs sufficiently thorough to take into account apparently minor elements but which can be sufficient to create a likelihood of association because of all relevant factors (such as of the reputation of the trade mark, the identity of the products and services offered, etc.).
Our article aims at demonstrating that European case-law is not satisfying in this regard. Indeed, the CJUE has initially modelled the method of assessing similarity in the case of infringement of a trade mark with reputation on the method designed to search for a likelihood of confusion. As a consequence, it excludes any consideration of reputation at the stage of assessing similarity and encourages consideration of the overall impression produced by the signs. Although the CJEU has attempted to make certain adjustments, the method of assessing similarity in relation to trade marks with reputation remains unsatisfactory and a source of uncertainty in the case law. It is also inconsistent with the case law on protected designations of origin, even though the logic governing these two systems is similar. We conclude that the method of assessing similarity in the case of infringement of a trade mark with reputation should be reviewed and defined with regard to its own purpose, i.e. identifying elements of resemblances sufficient to create a mental link between signs, and not a likelihood of confusion.
[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]