Roland Mallinson reviews a new book, The Confusion Test in European Trade Mark Law by Ilanah Fhima and Dev S Gangjee (published by Oxford University Press, price £125 and available here).
For its narrow subject matter, this book has nevertheless proved invaluable within less than a day of me owning a copy. My judge in a case heard the day after the book launch had, like me, read salient bits of the book and was referring to them during the hearing. The debate was certainly better informed and more interesting as a result (the decision is pending…). The book is well researched and well written. I can’t recommend it enough (that is unless you’re in a case against me, in which case it’s really not worth buying at all).
Many cases covered
In 254 pages, the authors have comprehensively distilled and catalogued approximately 100 CJEU cases, 250 General Court cases and 200 UK cases (court, UKIPO and Appointed Person decisions), as well as a handful of EUIPO and Board of Appeal decisions, all deciding likelihood of confusion (LOC) between two marks. The case index includes 40 German decisions, a few Belgian, French, Finnish, Irish, Italian, Dutch and Spanish ones (to give a spread around the EU), three from Switzerland and Norway (to cover off EEA/EFTA), four Australian cases and 12 US ones. That’s a lot of case law analysed in relation to just two sub-paragraphs of the relevant EU Regulation (Articles 8(1)(b) and 9(2)(b) of Regulation 2017/1001).
The book follows the formula adopted by at least the EU and UK tribunals when considering likelihood of confusion (LOC), namely:
- similarity of the marks (as sub-divided with sections on visual, aural and conceptual similarity);
- similarity of the goods/services (looking at each of the Canon factors in turn, including a detailed look at functional complementarity versus aesthetic necessity); and
- the global assessment of LOC (considering the merit and impact of accounting for the UK courts’ “a significant proportion of the relevant public” or the CJEU’s hypothetical “average consumer” within this test).
Weighing the factors
Each of these chapters give an overview and introduction that explains the origin and likely weight of the various factors to be considered. There are also chapters with a separate focus on composite marks (this is especially helpful and looks at partial identity and ‘figleaf’ marks, amongst other hot topics), distinctiveness (including discussions around spill over reputation and swamping) and non-traditional marks (also dealing with the tricky issue of identifying what is the defendant’s mark or sign in such cases). Timing of the LOC test also has its own chapter, with an incisive review of cases about initial interest (pre-sale) and post-sale confusion.
The authors start by noting that LOC has been a neglected subject: “under-analysed and under-studied”. This book does well to redress that, in particular seeking to explain the reasoning behind some cases (often where the non-specialist CJEU and General Court judges have not always done so clearly themselves). The writing is engaging and succinct. The headings are clear and it easy to find the cases to help build an argument for or against LOC. Despite the analytical steps and factors to consider in the LOC test being well established, the authors recognise that judges and tribunals have struggled to apply them and articulate their decisions without them appearing subjective and arbitrary. They point out where the law is uncertain and are critical of it when it’s at its most formalistic and doctrinal, e.g. where judicial practice errs too much towards ‘procedural economy’.
Interesting observations in the book include spotting that EUIPO Boards of Appeal consider similarity of the marks before goods/services, whereas the UKIPO deals with the latter first. The authors conclude that the UKIPO approach tends to lead to less finding of LOC. They have also picked up on the tendency for European tribunals to weigh up fewer of the known factors when comparing goods/services than when comparing marks/signs. Their analysis of the many General Court cases also concludes that distinctiveness of the senior mark seems to hold less sway as a factor before this tribunal.
These and many other practical observations will make this and, no doubt, future editions of this book a must-have for the serious trade mark practitioner. Let’s hope the publishers make it available online soon. Later editions might also want to reflect the outcome of the current CP8, CP9 and CP11 EUIPO Convergence Programmes (CP3 and CP5 only seem to get a few mentions).
Roland Mallinson is a partner of Taylor Wessing in London and a member of the MARQUES Executive Team