This article reviews the current interpretation of section 10 of the UK Trade Marks Act 1994. In light of the decisions of the European Court of Justice in Sabel, Canon, Lloyd and Adidas, which are discussed in detail below, the extent of protection under section 10(2) is considerably wider than previously thought. Further the UK Court has now provided two judgments on the scope of section 10(3) in Premier Brands and Pfizer.
In order to provide comprehensive review, each aspect of section 10 is set out below and commented upon. Whilst certain aspects of the section may now be viewed as relatively uncontroversial, they are included for the sake of completeness.
"A person infringes a registered trade mark if he uses in the course of trade a sign ...."
These words prequalify each type of infringement under the Trade Marks 1994 Act ("the Act") and as a result the comments below apply equally to sections 10(1), 10(2) and 10(3).
"A person infringes a registered trade mark..."
Infringement of a registered trade mark may be by a natural person but the wording includes companies and organisations. These subsections are clearly limited to infringement of registered trade marks. In the United Kingdom the prohibition on the use of an unregistered mark is the province of the common law right against passing off.
"... if he uses ... a sign "
To infringe under section 10, a Defendant must use a sign. The question is whether mere use per se of the sign is sufficient for infringement to be found or is it necessary for there to be use of the sign as a trade mark. Within the scope of this issue is the question of whether use of a mark in a descriptive sense is 'use' within the meaning of the act. Such descriptive use may well fall within an available 'defence' to infringement under section 11.
Bravado Merchandising Services Limited v Mainstream Publishingconcerned the title of a book on the band Wet Wet Wet entitled 'A sweet little mystery - Wet Wet Wet - The inside story'. Although often cited as the first case to address this issue, the Judge accepted a concession by Counsel that use, to fall within section 10, must be use in a trade mark sense. Accordingly this case should not be viewed as definitive of the issue.
In British Sugar Plc v James Robertson2 ("Treat"), the Defendant tried to draw a distinction between the wording in section 9 namely
"exclusive rights ... are infringed by the use of a trade mark"
and section 10 which refers to use of "a sign". The Defendant attempted to argue that section 9 provides an overriding requirement that for infringement there had to be use as a trade mark. Mr Justice Jacob considered that all use fell within the scope of use under section 10 but purely descriptive use was saved by the defences in section 11.
"I can see no reason so to limit the provisions of section 10 [to infringement only where there is use of the sign as a trade mark]. That is not to say that purely descriptive use is an infringement. It is not but not because it does not fall within section 10 but because it falls within [the] section11(2) [defence]."
More recently in Phillips Electronics NV v Remington Consumer Products3 the Defendants argued that use had to be trade mark use ("use denoting origin") giving by way of example the use of the trade mark Mothercare. If the use of the mark denoted it was a book published by the proprietor of the trade mark, this would be an infringement. However if it was used as part of the title, for example "Mothercare : the correct way" this would not be an infringement as it was not trade mark use. The Court of Appeal considered that trade mark use is not essential as there is nothing in the Act which requires infringing use to be use as a trade mark. Lord Justice Aldous recognised that
" ... In any case I would expect any use which was not trade mark use to fall within the list [in section 11] ..."
The Act gives examples of what constitutes use of a sign in section 10(4)
"(4) ... a person uses a sign if, in particular, he -
(a) affixes it to goods or packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign; or
(d) uses the sign on business papers or in advertising."
The list is not intended to be exhaustive. Section 103(2) provides that
"In this Act ... references to use ... of a trade mark ... include use ... otherwise than by means of a graphic representation."
This opens up the possibility of infringement by other forms of use, such as sound.
In the ECJ decision in Lloyd Schuhfabrik Meyer & Co Gmbh v Klijsen Handel BV ("Lloyd") the Court considered the referred question of whether it is sufficient for there to be a likelihood of confusion based solely on the aural similarity between the mark "Loint's" and "Lloyd".
The Lloyd decision followed the decisions in Sabel and Canon (both discussed in more detail below) and referred to the fact that the likelihood of confusion must be appreciated globally taking into account all factors relevant to the circumstances of the case
"... the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them bearing in mind their distinctive and dominant components ... the national court must assess the degree of visual, aural or conceptual similarity between them ... In light of the foregoing ... it is possible that mere aural similarity between the trade marks may create a likelihood of confusion ..."
It is worth noting that "incidental inclusion" of a registered trade mark on goods/services may not amount to 'use' at all within the meaning of section 10. In Trebor Bassett Limited v The Football Association4 Justice Rattee held
"I accept that ... it cannot seriously be argued that [selling cards with photographs of England team players who are wearing shirts which feature the registered three lions trade mark] is in any sense using the logo in respect of the cards ... In my judgment it is plainly not .. By such reproduction, Trebor Bassett is not even arguably using the logo, as such in any real sense of the word >uses=."
"... in the course of trade..."
In most situations it should be fairly clear as to whether the sign is being used in the course of trade although this aspect may be an important issue with respect to charities.
In order to fall within section 10(1) of the Act a Claimant must show use of an identical mark in relation to identical goods or services. Section 10(1) reads
"A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered."
" ... a sign which is identical with the trade mark ..."
Once a Claimant has shown identity of the registered mark with the Defendant's sign and that the sign is used on goods which are identical to those for which the mark is registered, infringement will be found. Since the trade mark registration is, prima facie, evidence of validity, the Claimant does not need to prove that his mark satisfies the requirements of registration. In essence the Claimant does not need to prove his registered mark is distinctive.
"... By section 72 of the Trade Marks Act 1994 ... the registration is prima facie evidence of the validity of the original registration ..."5
Whilst it is often clear whether the sign is identical to the registered mark, there are two questions to address when considering identity between the mark and the sign. Whilst the questions are not capable of resolution in the abstract, the Bell Atlantic case discussed below provides some guidance.
Firstly, is there a de minimis test to be applied when considering whether a sign is identical to a registered mark? If a registered trade mark has been copied but the reproduced sign has a very minor error in it, say a very small part of the image is missing or a slightly different typeface is used, would such a mark be considered to be identical? Does such a minor error or different typeface remove a claim to infringement by virtue of use of an identical mark? Without authority in case law, it is submitted that exact identity may not be required although it is a question of fact in each case whether the de minimis limit is passed such that a claim under section 10(2) should be considered.
Secondly, if the registered trade mark is present but is 'qualified' in some manner. For example, although use of the sign BMW on a car would be an identical mark infringement, what would be the case for "BMW'S" or "B M W". It is interesting to note that in Origins Natural Resources Inc v Origin Clothing Limited ("Origins"), the claim for infringement of the registered mark 'Origins' against the Defendant's use of 'Origin' proceeded under section 10(2) as a similar mark. Had the respective sign and registered mark been reversed the Claimant may have been able to argue use of an identical mark.
In Bell Atlantic Corp. v Bell Atlantic Communications plc (unreported) it was held that
"... the question of whether a sign is used is identical to a registered trade mark where the registered mark is present, unaltered, but with added matter, depends on whether the added matter actually renders the sign so different from the registered mark as to distinguish it from the mark ..."
Accordingly if the added matter does so distinguish the sign from the mark, it must be included when assessing the sign. Once again this will turn on the facts of an individual case.
" ... in relation to goods or services ..."
The classification of goods into classes is a system adopted primarily to enable trade mark searching to be carried out. By the very nature of the classification system identical goods are unlikely to be in different classes.
"Generally there is no difficulty in identifying which class is relevant for a particular article. But borderline cases are not infrequent. For these the Registrar often uses the practice of describing the goods or services and adding the words 'included in this class' or 'included in Class x' ... The effect is to confine the specification to goods which fall within the description and which also were, at the time of registration, put in that class by the Registrar.6"
Once so confined the description of goods cannot be widened to find infringement under section 10(1).
"... which are identical with those for which it is registered."
When assessing infringement under this section, the comparison made is between the goods for which mark is registered and those for which the Defendant uses the sign. It is not a comparison between those goods which the Claimant happens, at the time of the alleged infringement, to be marketing or selling.
Mr Justice Jacob noted in Treat
"... when it comes to construing a word used in a trade mark specification one is concerned with how the product is, as a practical matter, regarded for the purposes of the trade. After all a trade mark specification is concerned with use in trade."
Is there a need for confusion?
There is no need for a Claimant to prove a likelihood of confusion under section 10(1). Once a Claimant has proved use of an identical sign in relation to identical goods, infringement should be found.
"A person infringes a registered trade mark if he uses in the course of trade a sign where because -
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."
Types of infringement under this section
There are three possible types of infringement under section 10(2) which can be categorised as (i) identical mark/similar goods or services, (ii) similar mark/identical goods or services and (iii) similar mark/similar goods or services. In each case there is a requirement that the Claimant proves a likelihood of confusion.
Test for infringement under 10(2)
The English approach to assessing section 10(2) prior to the decision in Sabel (discussed below) was set out in Treat. Mr Justice Jacob took the view that when assessing infringement for the purposes of s10(2), the Court should (i) identify the Defendant's sign and compare the registered mark with the sign and (ii) ask 'Are the goods or services identical or similar' and (iii) ask 'Is there a likelihood of confusion on the part of the public including a likelihood of association'.
"... the sign is similar to the trade mark ..."
In Origins Natural Resources Inc v Origin Clothing Limited7 Mr Justice Jacob considered that
" [Section 10] requires the Court to assume the mark of the [Claimant] is used in a normal and fair manner in relation to the goods for which it is registered and then to assess a likelihood of confusion in relation to the way the Defendant uses its [sign], discounting added matter or circumstances."
In Treat Jacob J continued
"... 'the statutory protection is absolute in the sense that once a mark is shown to offend it cannot escape liability by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor'
... [Section 10] merely requires the Court to look to see what sign the Defendant is using and says nothing about anything else ... one ... still has to identify the Defendant's sign for the purposes of the comparison. In most cases there can be no difficulty. It is either there or not. However it is possible for the sign to be hidden or swamped. No one but a cross word fanatic, for instance, would say that "treat" is present in Atheatre atmosphere".
In Pfizer Limited v Eurofood Link (UK) Limited ("Pfizer") Simon Thorley QC sitting as a Deputy Judge succinctly stated that
" ... so far as concerns the similarity of the trade marks, the relevant comparison must be between the trade marks alone [VIAGRA and VIAGRENE], disregarding factors such as the blue bottle, the blue colouring of the liquid and the diamond device [on the Defendant's product]."
The Claimant's VIAGRA product is sold in the form of a distinctive diamond shaped tablet. Such non-registered features are not taken into account when assessing registered trade mark infringement (although they may be relevant when looking at passing-off).
"The correct comparison is between a notional and fair use of the Claimant=s mark as registered with the actual use of the Defendant's mark complained of ... The correct comparison for the purposes of section 10(2) is not merely a comparison of the use of the mark VIAGRA on a pharmaceutical product and VIAGRENE on a non-alcoholic beverage. It is between VIAGRA on a pharmaceutical product and VIAGRENE as proposed to be used on a beverage which was to be marketed as a drink capable of stimulating the libido of men and women by incorporating a natural herb which was thought to act directly upon the reproductive organs."
This approach shows, in part, the eliding of the test for similarity of marks and similarity of goods or services notwithstanding the discounting of such factors relating to the Defendant's goods themselves, for example, the colour of the bottle.
" ... and is used in relation to goods or services identical with or similar to those for which the trade mark is registered ..."
In Treat Jacob set out a number of factors which the Court would take into account in assessing whether or not the goods or services were similar but he stressed that this list provided no more than general guidance. However in order to assess whether the Defendant's goods are similar goods to the Claimant's specification it is first necessary to consider exactly what the goods for which the mark is registered actually are.
The old Jellinek's Application8 test for "goods of the same description" was updated and approved for similar goods in Treat taking into account modern marketing methods. The factors identified by Mr Justice Jacob in Treat which are to be taken into account in considering whether there is similarity of goods are
"(a) the respective uses of the respective goods or services;
(b) the respective users of the respective goods or services;
(c) the respective nature of the goods or acts of service;
(d) the respective trade channels through which the goods or services reach the market;
(e) in the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
(f) the extent to which the respective goods are competitive. This inquiry may take into account how those in the trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors."
It is important to note that in Sabel BV v Puma AG9 ("Sabel") (discussed below), the ECJ adopted a different approach to that of Mr Justice Jacob in Treat and effectively elided the questions of similarity of the marks, similarity of the goods and the requirement for a likelihood of confusion. As can be seen from the above quote in Pfizer, such an approach has been followed by the UK Courts. This issue is developed below.
"... there exists a likelihood of confusion on the part of the public which includes a likelihood of association with the trade mark ..."
In Wagamma Limited v City Centre Restaurants Plc10 ("Wagamama") the Claimant operated a successful Japanese Style restaurant in London under the name WAGAMAMA which was acknowledged as having a significant reputation. Although a Japanese word, WAGAMAMA had no meaning in the UK. The Defendant opened a restaurant in London which provided Indian Style food under the name RAJAMAMA. On the issue of the requirement for confusion Mr Justice Laddie considered whether the words "likelihood of association" extended the protection afforded to similar marks / goods to non-origin type confusion
"There is no dispute between the parties that such classic infringement by confusion as to the source or origin of the goods or services will constitute infringement under section 10 ... However the [Claimant] goes further [arguing] that there will be infringement if on seeing the Defendant's mark, the registered mark would be 'called to mind' by a customer even if there is no possibility of the customer being under any misapprehension as to the origin of the goods ...
... there are two possible constructions which may be placed on ... section 10 (2) ... The rights of the proprietor against alleged infringers may be limited to classic infringement which includes association as to origin or following the Benelux route, it could cover not only classic infringement but also non-origin association. In my view, the former construction is to be preferred. If the broader scope where to be adopted, the directive and our Act would be creating a new type of monopoly not related to the proprietor's trade but to in the trade mark itself ..."
In Sabel the ECJ was asked to consider a reference on the meaning of Article 4(1)(b). This Article contains an equivalent provision to the qualification to section 10(2) namely
"... there exists a likelihood of confusion on the part of the public which includes the likelihood of association between the two marks."
The ECJ was asked whether this Article can apply where there is no likelihood of (a) direct confusion (where the public confuses the sign and the mark in question) or (b) indirect confusion (where the public makes a connection between the proprietor of the sign and of the mark and confuses them) but only a likelihood of association in the strict sense (where the public considers the sign to be similar to the mark and the perception of the sign calls to mind the memory of the mark, although the two are not confused). The ECJ held that
"Article 4(1)(b) is designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, 'there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark'. It follows from that wording that the concept of likelihood of association is not an alternative to that of likelihood of confusion but serves to define its scope. The terms of the provision itself exclude its application where there is no likelihood of confusion on the part of the public."
As a result likelihood of association in the strict sense is insufficient under section 10(2). To succeed under section 10(2) a Claimant must prove a confusion as to the origin of the Defendant's goods.
Global Assessment of likelihood of confusion
As can be seen from the wording of the section, the test for infringement under 10(2) requires that "because of" the similarity between the sign and the trade mark or goods/services there exists a likelihood of confusion of the type identified in Sabel. The ECJ in Sabel considered that the two aspects do not stand alone as, firstly test for similarity and secondly test confusion.
"[Section 10(2) ] does not apply where there is no likelihood of confusion on the part of the public. In that respect, it is clear from the 10th recital in the preamble to the Directive that the appreciation of the likelihood of confusion >depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified=. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case."
Accordingly a Court must assess the likelihood of confusion globally. In order to do this a Court must take into account all factors relevant to the circumstances of the case.
Relevant Factors in Global Assessment
In Sabel the ECJ elaborated on what it meant by global appreciation.
"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. The wording of Article 4(1)(b) of the Directive - "... there exists a likelihood of confusion on the part of the public ..." - shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.
However ... where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion."
The important issue arising out of this Judgment is the principle that the more distinctive the mark, the greater will be the likelihood of confusion. Marks with a highly distinctive character therefore enjoy broader protection than marks with a less distinctive character. A mark can be distinctive in itself or because of its reputation.
The ECJ in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc11 ("Canon") continued with this theme. In this case, the company MGM had applied to register the mark 'CANNON' in respect of certain goods including video film cassettes. Canon opposed the application on the ground that it infringed its own mark 'CANON', already registered in respect of certain goods including television filming and recording devices.
The CANON mark was accepted as having a reputation (unlike Puma's mark in Sabel). The ECJ was asked whether, on a proper construction of Article 4(1)(b) of the Directive (which the reader will recall has an equivalent confusion test to Section 10(2)), the distinctive character of the earlier trade mark, and in particular its reputation, was to be taken into account when determining whether the similarity between the goods or services covered by the two trade marks was sufficient to give rise to the likelihood of confusion.
"... the Court has held that the likelihood of confusion on the part of the public ... must be appreciated globally, taking into account all factors relevant to the circumstances of the case ( ... Sabel v Puma ... )
A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular [between the]12 similarity [of] the trade marks and [that of the] goods or services. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa. The interdependence of these factors is expressly mentioned in the 10th recital of the preamble to the Directive, which states that it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified."
In essence the ECJ held that because confusion must be assessed globally this implies some interdependence between the relevant factors. In particular, two of the relevant factors are the similarity between the trade marks and secondly the similarity between the goods and services.
" ...[ Noting that ] the more distinctive the earlier mark, the greater the risk of confusion ... and ... since [the] protection of a trade mark depends... on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character."
This reiterates the position reached in Sabel. Accordingly due to this interdependence of factors, a lesser degree of similarity between the goods may be "off-set" by a greater degree of similarity between the marks and vice versa. The ECJ continued in Canon to set out some of the factors relevant to an assessment of similarity of goods or services
"n assessing the similarity of the goods or services concerned ... all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary."
In identifying such factors, the ECJ appeared keen not to limit the possibility of other factors. It is possible that the factors set out in Treat (above) may be further relevant factors when assessing similarity of goods. In summary, the ECJ held
"... the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to a likelihood of confusion ...
... the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, economically-linked undertakings constitutes a likelihood of confusion within the meaning of [Section 10(2)] ..."
However, taking into account the reputation of a mark, does not result in the ridiculous position such that for an extremely well known mark all goods would be considered to be similar to those for which the mark is registered .
"... for [Section 10(2)] even where a mark is identical to another with a highly distinctive character, it is still necessary to adduce evidence of similarity between the goods or services covered by it ..."
With these comments the ECJ may have been mindful of Mr Justice Jacobs' comments in Treat
" British Sugar seeks to elide the questions of confusion and similarity ... I do not think it is legitimate to elide the question in this way ... The point is important. For if one elides the two questions [Firstly are the goods similar and secondly is there a likelihood of confusion] then a 'strong' mark would get protection for a greater range of goods than a 'weak' mark. For instance 'Kodak' for socks or bicycles might well cause confusion, yet these goods are plainly dissimilar form films or cameras. I think the question of goods is wholly independent of the particular mark the subject of the registration or the defendant's sign."
Whilst eliding the questions of similarity and confusion is now a valid approach, care must be taken to show similarity of goods in any event.
No established likelihood of confusion but a likelihood of association
The Advocate General in Marca Moda v Adidas AG ("Adidas") C-425/98 (unreported) had an opportunity to make a thorough review of the issues arising out of Sabel and Canon. The case was primarily concerned, once again, with the scope of words "likelihood of association".
"I ... conclude that in general [Section 10(2)] cannot be regarded as applicable where there is a likelihood of association and the possibility of confusion, although not established, cannot be ruled out. The [Netherlands Supreme Court], however, considers that the wording of paragraph 24 of the judgment in Sabel v Puma suggests that where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public, the likelihood of confusion may be assumed from the likelihood of association."
Paragraph 24 of the Judgment in Sabel reads
" ... the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public ..."
Reviewing this paragraph Advocate General Jacobs held that
" ... Even if doubts were to arise as to what the Court meant in SABEL v Puma, they have now been unequivocally dispelled by its judgments in Canon and in Lloyd. In those cases the Court was asked about the weight to be given, in assessing the likelihood of confusion, to the fact that the earlier mark is highly distinctive. It is clear from the answers it gave that the distinctive character of the earlier mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two marks is sufficient to give rise to a likelihood of confusion and that hence the more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.
Thus ... whether there is a likelihood of confusion is a question of fact in each case, and in that context the fact that the earlier mark is distinctive will often be relevant for determining whether there is in fact a likelihood of confusion. A likelihood of confusion must, however, exist in order for [section 10(2)] to apply."
Without a likelihood of confusion as to origin a section 10(2) case will fail. As if to nail the point home, Advocate General Jacobs noted that
"... In ... cases [such as the use in relation to records, cassettes, compact discs or similar goods of a sign consisting of a small dog listening to the trumpet of a phonogram] where the marks involved are marks with analogous semantic content, it will ... evidently be easier to show a likelihood of confusion where the earlier mark has a particularly distinctive character than in a case such as SABEL v Puma where the earlier mark did not have a particularly distinctive character.
[However] ... assuming the likelihood of confusion where the earlier mark is particularly distinctive and a likelihood of association has been established, would not only run counter to the wording of [Section 10(2)] and the objectives of the Directive ... but also have the effect of further extending the protection available to particularly distinctive marks."
The Advocate General considered that marks with a reputation, in effect, already enjoy greater protection under section 10(2) than less well known marks after the ECJ's explanation in Canon.
"...Granting yet further protection to marks with a reputation in the absence of confusion would amount to granting protection against dilution, namely the blurring of the distinctiveness of a mark such that it is no longer capable of arousing immediate association with the goods for which it is registered and used. To do so by a creative interpretation of [Section 10(2)] would run counter to the scheme of the Directive, which clearly envisages that such additional protection should be conferred, if at all, by virtue of ... [Section 10(3)]"
This raises the question of whether there is any overlap between section 10(2) and section 10(3) (dissimilar goods infringement).
Does Section 10(2) in fact cover infringement with respect to dissimilar goods?
In Pfizer Limited v EuroFood Link (UK) Limited13 (unreported)Simon Thorley QC held that
"... the Court's ruling in Canon makes it plain that one must have regard to the interdependence of the similarity of the trade marks and the similarity of the goods or services. Further one must take into account the distinctive character of the earlier trade mark and its reputation, if any, when determining whether the similarity is sufficient to give rise to the likelihood of confusion ... In particular these authorities make it plain that there is no automatic bar to a finding of infringement under section 10(2) merely because the goods on which the Defendant is using the mark are in some respects dissimilar to those for which the [Claimant's] mark is registered. In all cases it will be a question of fact as to whether, notwithstanding the differences in the categories of goods but having regard to all other relevant factors, the relevant likelihood of confusion is proved."
Clearly if goods are similar but not identical there will be "some respects" in which they differ and to that extent they have dissimilarities. Simon Thorley QC continued
"... on the evidence before me, I have concluded that there is a substantial similarity between the marks as marks. VIAGRA and VIAGRENE are inherently likely to be confused if used in relation to similar goods. I have also concluded that the goods whilst superficially different do have similarities in that both are designed to appeal to those suffering from impotence."
As the reader will be aware VIAGRA is a mark used on the Claimant's pharmaceutical product. The Defendant used VIAGRENE on a non-alcoholic beverage which was 'to be marketed as a drink capable of stimulating the libido of men and women by incorporating a natural herb which was thought to act directly upon the reproductive organs.' In light of Sabel and Canon's global assessment test such an approach to infringement under section 10(2) may be valid notwithstanding the fact that on the face of it a tablet and a soft drink appear to be dissimilar products. It will be a question of fact, in light of all the relevant circumstances, whether there is nevertheless a likelihood of confusion if the distinctive character and reputation of a registered mark together with a high degree of similarity between the trade marks offsets the lesser degree of similarity between the types of goods on which the marks are used.
A few aspects to section 10(2) appear as points in their own right and are discussed below.
Determining Distinctive Character
Since highly distinctive marks enjoy broader protection, it is important to assess the distinctive character of the mark. In order to do so the Court has indicated in Lloyd
" In determining the distinctive character of a mark and accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking and thus to distinguish those goods or services from those of other undertakings ...
In making that assessment, account should be taken, in particular of the inherent characteristics of the mark including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and longstanding use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations."
It is interesting to note that the Court appears to be listing factors which are similar to those listed for assessing 'reputation' under section 10(3) as set out in General Motors v Yplon (discussed below). Further the flip-side to the principle which gives enhanced protection to distinctive marks is that less distinctive marks have less protection. In the European Limited v The Economist Newspaper14, 'THE EUROPEAN' was held to be entitled to a narrow protection, the word European being not, of itself, distinctive of the trade origin of the Claimant's newspaper.
From a practical viewpoint, when making a global assessment of the likelihood of confusion, it is often not immediately clear who should be taken to be the relevant public. In Sabel the ECJ held that the use of the phrase 'a likelihood of confusion on the part of the public'
"... shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details"
In Adidas, the Advocate General noted
" ... the standard of the average consumer which the Court has developed and which is to be applied when making the global assessment of the likelihood of confusion ... is ... that ... the average consumer must be taken to be reasonably well- informed, observant and circumspect .. it can no longer be relevant that a minority of particularly inattentive consumers might possibly be confused. Community law has thankfully disempowered the consumer who confuses the mark 'LUCKY WHIP' with the mark 'Schöller- Nucki'."
The average consumer will of course also depend on the goods or services which are the subject of the particular case.