The Trade Mark Right

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The relevant regulation for this thesis was mentioned in chapter 1.1, but will be pre-sented more thoroughly in this chapter with quotations from the legislation. According to the chosen research method, the legislation is the starting point to detect discrepan-cies between the two legal systems subject to investigation. These discrepancies are re-ferred to as the formal discrepancies, meaning that they can be deduced from the legis-lation. The TMD will already at this stage be presented together with its Preamble and some basic case law necessary to give substance to the relevant articles.


EU case law declares that EU directives only have the capacity of having vertical direct effect, ie they can only be enforceable against the state.55 Furthermore, a provision of a directive must be unconditional and sufficiently precise in order to attain direct effect. Horizontal effect of EU directives have many times been subject to interpretation of the ECJ and the broadest interpretation done in this aspect was to ‘read in’ the directive in the national legislation, ie to interpret the national legislation in the light of EU law.56 These circumstances generate the potential of assigning article 4.1(b) direct effect, since addressing relationships between individuals and authorities, with a reservation towards the confusion doctrine not being sufficiently precise. Whereas article 5.1(b) would probably not be directly enforceable since regulating the relationship between individu-als, but should nevertheless serve as guidance to national law.
When the ECJ is faced with a preliminary ruling, it shall, according to established EU case law, only supply for the necessary amount of interpretation in order for the national referring court to deliver a verdict in the present case. Ergo, it is up to the national court to apply the ECJ interpretation and rule on whether confusion is in hand within the meaning of the TMD.
The TMD does not focus on harmonizing the member states’ complete trade mark legis-lations, moreover on those aspects having a direct effect on the internal market.58 None-theless, in relation to some of those aspects the TMD basically requires full compliance. In the case of Arsenal v Matthew Reed59 the ECJ emphasized that article 5.1 of the TMD is an example of absolute harmonization, and national discrepancies may not exist when it comes to the plain meaning of the section. Consequently, the Court felt the need to settle a homogeneous interpretation of Article 5(1).60 Many aspects of that section however needed interpretation, whereas a complete interpretation of the article must be collected from various cases. The case of O2 v Hutchinson61 also emphasized the impor-tance of a cross-border complying trade mark protection in the light of article 5 of the TMD. It is the duty of the Court to give a uniform interpretation of the article.62
Article 4 of the TMD relates to the registration of a trade mark and article 5 of the TMD manage the trade mark right, ie the use of a trade mark. Moreover, the 1(b) sections of those articles are relevant for this thesis as they specifically provide for the confusion doctrine. The relevant provisions are substantively corresponding when it comes to the formal conditions for application, meaning that the wordings and the objectives are equivalent,63 although the articles treat different aspects of the trade mark system.64
EU case law65 has thereto declared that an interpretation done in the light of one of ar-ticle 4 or 5 of the TMD shall apply to the other as well, although mutatis mutandis66. This is partially supported by the case of O2 v Hutchinson67, where the Court said that the meaning of likelihood of confusion is the same in articles 4.1(b) and 5.1(b),68 but nonetheless made a distinction. The registration assessment must be done: ‘to ascertain whether there is a likelihood of confusion with the opponent’s earlier mark in all the circumstances in which the mark applied for might be used if it were to be registered’69.
This clearly implies that a hypothetic assessment is to be done from unlimited scenarios. The infringement assessment, implying an actual use, must however be restricted to ‘the circumstances characterizing that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion’70. The later proceeding would thereby be of more concrete nature, with restrictions to actual circumstances instead of potential.

Article 4.1(b)

‘A trade mark shall not be registered or, if registered, shall be liable to be declared invalid… if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the pub-lic, which includes the likelihood of association with the earlier trade mark.’71

Article 5.1(b)

‘The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not hav-ing his consent from using in the course of trade… any sign where, because of its identity with, or similarity to, the trade mark and the identity or simi-larity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.’72

The VmL

The VmL regulates the area of trade mark rights on a national level. For the purpose of this thesis, the relevant sections are 4, 6 and 14 §§ as explicitly mentioning the concept of confusion. The exclusive right conferred on the proprietor, referred to as the trade mark protection, is stipulated in 4 § VmL, whereas 6 § VmL makes an effort to define the concept of confusion. 14 § VmL manage the registration. More precisely, 14 § 1 st 6 p VmL mentions the confusion as a relative ground for refusal of registration.

4 § VmL

‘The right to a trade mark… means that no other than the proprietor may in course of trade thus use confusingly similar sign for their goods…’73

6 § VmL

‘Signs are considered confusingly similar under this act only if they relate to goods of identical or similar kind…’74

14 § VmL

‘A trade mark shall not be registered… if the sign is confusingly similar to… someone else’s trade mark registered after prior application or… acquired when applying for registration…’75

Analyzing Thoughts

The Effect of the TMD

The direct effect of article 4 or 5 of the TMD has not been subject to ECJ interpretation. The ECJ has however declared that case law in relation to one of article 4 or 5 of the TMD also applies to the other. Since the ECJ also declared that no national discrepan-cies in relation to the wording of article 5 are accepted, one must assume that no nation-al discrepancies are accepted in relation to article 4 either. These rulings, in combination with the equivalent wording of the articles, result in the conclusion that the EU equate the articles, and hence the proceedings, as to the application of the confusion doctrine. The general national view is thereto to equate these proceedings. Both legal systems however indicate that the actual assessments are to be conducted with a slight variety, which will be investigated further.

Formal Discrepancies

It is apparent that the national legislator has chosen not to implement many of the terms in the TMD, with the result that the two legal systems have a different wording. Both relevant articles in the TMD stipulates that there shall be a likelihood of confusion, in-cluding the likelihood of association. The TMD also mentions the relevant perspective when assessing confusion, ie on the part of the public. None of these terms are men-tioned in the national legislation. Furthermore, the TMD does not provide for a defini-tion of the term confusion or a clarification of the level of likelihood. The term associa-tion does not enjoy a substantive meaning either, which makes the term rather abstract. A determination of the term public is also lacking. Consequently, in order to establish an objective framework and substance to the relevant EU legislation, an investigation of these abstract concepts needs to be conducted.
In the national legislation the confusion doctrine comes to term as a prohibition against confusingly similar signs. The statutes do not provide for much guidance as to the meaning of the rather subjective and relative term. The only statutory objective restric-tion on the application of the national confusion doctrine is the limitation to goods of identical or similar kind. This raises questions about the meaning of confusingly similar and similar goods.
Another formal observation is that confusion seems to have the same significance in re-lation to registration and infringement proceedings on both EU and national76 level. There is however, due to indications from case law and the chosen philosophy method, a need to view the application of the doctrine while keeping in mind a potential diversi-ty of meanings depending on the moment of application, meaning that the confusion doctrine might nevertheless have a varying meaning in relation to registration and in-fringement.
In the forthcoming chapters, an establishment of the EU’s and Sweden’s general ap-proach towards the confusion doctrine will be settled by a comparative study, with a given emphasis to the detected regulatory differences. The next chapter will have an EU perspective with focus on three of the most elementary EU cases in relation to the con-fusion doctrine: the Sabel v Puma case, the Canon v Metro case and the Lloyd v Klijsen case77.


Likelihood of Confusion

The Concept of Confusion

The original confusion doctrine denoted the risk of consumers confusing the goods, ie actual confusion. The current view of confusion do not require a risk of confusion as to the goods, it is merely sufficient with confusion as to a commercial link between the undertakings, ergo a license agreement, provision, consent or other cooperation between the undertakings. The contemporary meaning of confusion is referred to as indirect con-fusion,78 and shall be applied in the light of the principle of origin.79

The EU View

The above development concerning the confusion doctrine can be discerned from an EU perspective, supporting the obvious change of focus towards a stronger protection for the trade mark proprietor. In the ECJ cases of Adidas v Marca Mode80 and O2 v Hut-chison81 the Court stated that the perception of the relevant public that the goods come from the same undertaking or from economically linked undertakings is enough for a potential likelihood of confusion.82 Furthermore, ECJ has explicitly declared that the confusion doctrine shall be applied in the light of the principle of origin.83
The TMD explicitly mentions the likelihood of confusion, but do not provide for further details as to the application of the doctrine. The ECJ has therefore, since the introduc-tion of the TMD, distributed case law interpreting the articles. Through several cases the ECJ has established four conditions in order to enforce the confusion doctrine as to un-lawful trade mark use, namely: it must be in the course of trade; it must be without the consent of the trade mark proprietor; it must be in relation to identical or similar goods and it must affect or be liable to affect the functions of the trade mark, in particular its function of guaranteeing to consumers the origin of the goods or services.84
The ECJ thereto declared that it is for the national courts to determine whether a likelih-ood of confusion exists,85 but has nevertheless provided for some compulsory guide-lines when making that assessment. With reference to the Preamble of the TMD, the ECJ declared that the likelihood of confusion depends on elements such as:
the recognition of the trade mark on the market
the association which can be made with the used or registered sign
the degree of similarity between the trade mark and the sign
similarities between the goods identified 86
The Canon v Metro87 case emphasized the fundamentals of a global assessment, ie tak-ing into account all the relevant factors in the case. Nevertheless, the sign and goods si-milarity were held to be of particular importance. Further on, there is an interdepen-dence between sign and goods similarity, hence a lesser degree of sign similarity re-quires a higher degree of goods similarity, and the other way around.88 The ECJ also stressed, in accordance with the TMD and its Preamble89 that: ‘the existence of a confu-sion risk does not solely come down to the similarity between the trade mark and the sign. The risk of association between the trade mark and the sign must also be consi-dered’90. The case of Lloyd v Klijsen91 developed this further by stating that account should be taken to the intrinsic characteristics of the trade mark, (ie distinctiveness), the products, the recognition on the market (ie market share, geographical area, actual use), investments as to marketing the trade mark, the capability of the consumers to state the origin of the trade mark and statements from business organizations.
Despite the effort to provide for an objective framework, the EU confusion doctrine has been described as: ‘flipping a coin is about as good as thoughtful analysis’ or ‘confusion often is in the eyes of the beholder’92. This can be illustrated with examples. The registration of the trade mark ‘Mariflex’ was opposed by the trade mark ‘Marlex’, based on a likelihood of confusion. The registration concerned the same product class. The OHIM found no likelihood of confusion because the word ‘flex’ was a describing com-ponent of the product, and the dominant component of the applicant’s trade mark, ‘ma-ri’, was due to the name of the applicant. ‘Affilene’ was held by OHIM to be confusing-ly similar to ‘Affilin’, while ‘Nars Des’ was not confusingly similar to ‘Mars Des’. ‘Galvalloy’ was too similar to ‘Galvallia’, while ‘Picasso’ was not similar to ‘Picaro’.93 It seems as these examples could just as easily be argued to be confusing situations as the opposite. Not only the OHIM has been accused of conducting an unpredictable as-sessment, also the ECJ has been claimed to apply a case by case approach.94

The National View

The national confusion doctrine, accused of formerly being static and technical, demon-strates a development towards the more abstract EU approach as well. Thus increasing the protection of the proprietor. The national development has however merely been stated as being in the direction of the EU development, suggesting that the EU has come a lot further.95 National case law thereto confirms this development, stipulating that the risk of whether the consumers de facto confuse the goods is no longer a determining factor when applying the confusion doctrine. Further on, trade mark law does not pri-marily serve as guidance for consumers in their choice of product; moreover to protect the proprietor’s interests in the form of preserving their goodwill. The risk of a percep-tion of a commercial link between the goods is thereby determining.96
There is a general national view that the confusion assessment is the same in relation to registration and infringement proceedings.97 This is supported by case law from the HD, indicating that a single application and assessment of the confusion doctrine in relation to registration and infringement proceedings is desirable.98 The national preparatory work to the current VmL however makes a distinction between the two proceedings.99 Legal literature has in its turn declared that judicial case law should provide guidance to administrative case law, and not the other way around, implying that they should at least comply. On the other hand, there are unavoidable circumstances that justify diversity in the application of the confusion doctrine due to the temporal occurrence of the proceed-ings. The General Courts might have access to material and evidences not existing at the stage of registration.100 These circumstances are however contradicted by the view of applying the confusion doctrine in a theoretical manner.
National preparatory work, case law and legal literature strongly advocate a global as-sessment in relation to confusion,101 suggesting taking into account all the relevant fac-tors relating to the trade marks. With some distinction to EU law the main factors are:
Similarities of signs
Similarities of goods
Actual use
The Public102
An interaction exists between the two most fundamental assessment factors of the na-tional confusion doctrine as well. An overwhelming existence of one factor requires a lower prevalence of the other factor. Ergo, an identical sign similarity imposes a lower requirement on goods similarity, according to the product rule.103 Nonetheless, all high-ly renowned legal practitioners encourage a global assessment with no dividing and se-parating into more or less note-worthy and protection-worthy elements.104 Furthermore, national case law has, in line with EU case law, indicated that the interaction between the different factors of the global assessment of confusion is subject to national discretion. In the case of Bregott v Så Gott105 the national court declared that the impact of the common dominant components is not a question for the ECJ, moreover the national courts: ‘The mutual relevance of the circumstances and the significance in relation to other relevant facts is a question for the national court to assess’.106
The effect of the product rule was illustrated in the of case O2 Communications v O2 Energi107 where the sign similarity concerning the dominant component was held by the PBR to be significant, but confusion was despite not imminent due to diversity of goods. The former trade mark was designating transport and travel, whereas the later trade mark was designating distribution of electricity. The case Easy-Vent v EleVent108 shows that the opposite outcome can be reached when there are substantial similarities of signs and identical goods. The latter case was held to be an infringement.

Table of Contents
1.1 Background
1.2 Purpose
1.3 Method
1.4 Delimitation
1.5 Terminology
1.6 Structure
2.1 Purpose & Function
2.2 The Trade Mark Right
2.3 Obtaining the Trade Mark Right
2.4 Analyzing Thoughts
3.1 Introduction
3.2 The TMD
3.3 The VmL
3.4 Analyzing Thoughts
4.1 Likelihood of Confusion
4.2 Likelihood of Association
4.3 The Public
4.4 Analyzing Thoughts
5.1 Confusingly Similar Signs
5.2 Similar Goods
5.3 Analyzing Thoughts
6.1 Introduction
6.2 The EU View
6.3 The National View
6.4 Analyzing Thoughts
8.1 Formal Discrepancies
8.2 Practical Relevance
8.3 Legal Certainty & De Lege Ferenda
List of References
The Confusion Doctrine Establishing Swedish Compliance with EU Law

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