The Likelihood Of Confusion In The European Union Trade Mark Opposition Procedure – Part II

In light of an opposition procedure under Article 8 of the European Union Trade Mark Regulation (EUTMR)1, one must assess the similarity between marks to establish the possibility of finding 'likelihood of confusion', in conjunction with the similarity between goods and services, which was discussed in Part I of this piece.

In the assessment of marks, there is a very fine line between finding a mark to be similar or dissimilar, which line is not always easy to define. For most cases, it is sufficient to globally assess the marks through three important elements, which elements, were firstly introduced in the Sabel vs Puma case2, but remain of great importance today. These elements are the following:

1. Visual similarity

   The visual element is naturally the main criteria of assessment since marks are mostly perceived visually. Yet, it is also the most complex of assessment since it includes any textual content, colour, shape, size and position, thus not all visual comparisons might be the same. As an example, a visual comparison involving word marks is not the same as a visual comparison involving figurative marks.

   As an example, the Courts have found the following marks visually similar since there was no high variation in the style of the word elements in the figurative marks in comparison to the word element which was easily recognisable and legible:

   Earlier Sign Contested Sign vendus sales & communication group 3 EMERGEA 4 In the case of Stephanie Scatizza vs OHIM5, involving the below figurative marks, the Court assessed the marks visually and came to the conclusion that the difference between them was not satisfactory in avoiding a frail degree of similarity between them and the Court still found 'likelihood of confusion' due to the identity of the goods and the marks being conceptually identical and phonetically similar.

   Earlier Sign Contested Sign However, these are not the only types of visual similarities one might come across. The EUIPO, in its guidelines6, makes reference to other types of visual comparisons including the comparison between the below signs which were all found to be similar:

   Purely figurative signs vs purely figurative signs; 7 Stylised marks vs stylised marks; 8 Word/figurative signs vs purely figurative signs; 9 2. Aural (phonetic) similarity

   The syllables, along with their sequence and stress, form the major elements which determine the overall phonetic impression of a mark. A single letter can also be compared...