Trademarks and the likelihood of confusion
Unless an infringement occurs under the limited circumstances of s.10 (1) then s.10 (2) is the next option and is formulated so that where the use of a mark ‘in the course of trade’ is likely to cause confusion given its similarity or identity with a particular trademark and a particular product.
As we have seen passing off more aptly exhibits the kinds of interest that we saw in relation to producer’s interests and as we observed many of the laws movements have gone in this direction nevertheless the test is still fundamentally grounded in a consumer-centric approach . The fact that this is the fundamental basis does not however obstruct their being perversions of interpretation and we will now turn to the judicial consideration of these issues and see whether they have struggled with the concept and look at distinctions in the concept of confusion as between Europe and the UK. The first thing to understand about the test is that it is speculative, a factor which has been heavily criticised , and Lord Diplock made the position clear in General Electric Co v. General Electric Co Ltd that past evidence of confusion would be strong but wasn’t a prerequisite and could be made out in a different fashion. The interesting thing about the test is that it also seems to be ‘global’ in that it is ubiquitous throughout most large international bodies of law such as Benelux, TRIPs and Directive 89/104 and even in America it has been enshrined in the Lanham Act
This had developed from case law in the English common law, an action which eventually evolved into passing off with the first reported decision being Sykes v. Sykes where an action for damages on the proof of deliberate deceit was allowed and an action in equity based on deception of the public also appears to have been available . The 1938 Act was seen as anachronistic and had a number of very large flaws but successive governments had showed significant inertia until their hand was forced by the promulgation of Directive 89/104 by the European Community (EC) Council in 1988 which aimed at harmonising trade mark law throughout the member states, this lead directly to the TMA 1994 which is why it is so important because it in effect incorporated EC Law into our domestic law but there were still significant conflict over the proportions of the concept of confusion between English law and European law, <
The conflict between the English concept and what is varyingly called the Benelux interpretation or the European approach depending on the text you refer to but there was in the aftermath of Directive 89/104 and TMA 1994 an undoubted tension over the exact interpretation the courts ought to take to the concept of confusion. The confusion was largely caused by the case of Wagamama Ltd v. City Centre Restaurants plc just a year after the 1994 Act came into force Laddie J showed a reluctance to accept the wider ‘Benelux’ approach, this was not bad law in any sense of the word given that at the time there was little European jurisprudence on the issue and the Benelux approach was in no way binding or even necessarily persuasive of parliamentary intent. The major issue was that the 1994 Act added the concept of ‘likelihood of association’ which had never been their formerly and widened the concept because as well as the traditional understanding of confusion which had to be confusion as to origin, i.e. a misunderstanding of where the product came from but likelihood of association prima facie has a wider meaning and covers the likelihood that the use of a similar mark on a different product might cause a consumer to associate it with the other product.
The interesting thing about the Wagamama judgement is its reference to background justifications, as Laddie J states the TMA 1994 requires a reconsideration of first principles and he came to the conclusion that ‘If the broader scope were to be adopted, the directive and our Act would be creating a new type of monopoly not related to the proprietor’s trade but in the trade mark itself’ . Laddie J interpreted the ‘ English’ approach as placing a premium on the origin function of a trade mark and saw anything more as harmful to consumers because it would be creating a monopoly right wider than is justifiable thus distorting competition in the market . This may well have been accepted jurisprudence under the TMA 1938 but the decisions in the European Court of Jurisprudence began to stretch the traditional English concept in a top-down manner.
The European interpretation of the directive has been different and has taken a middle path which leaves the concept of confusion unclear, in the seminal case on this issue is Sabel BV v. Puma AG, Rudolf Dassler Sport the court accepted the arguments of the UK, which built on Wagamama, however the conclusion they reached seemed to differ from the categorical judgement of Laddie, J. The ECJ agreed that ‘analogous semantic content is not in itself a sufficient ground’ but then went on to state that it would be on each individual case down to the complex factors whether something more than origin could be imputed to the trademark>> in some situations a trademark might well operate as more than just an indicator of origin. What may have been confusion between the European concept and the UK concept has now, as we will see, transformed into a general confusion over the whole area. The court in Sabel laid down a now famous dictum and contains the accepted test for likelihood of confusion:
‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case…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 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’
Although not explicit, the European approach seems to reflect a different emphasis on similar background justifications because they see protection of the customer of confusion marginally more important than creation of a wider monopoly right. The position was slightly elucidated by the decision in Canon Kabushiki Kaisha v. MGM Inc. :
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’
There are other aspects to the test which seem to have fleshed the test out somewhat. The likelihood of confusion test was further expounded in another case soon after Canon Lloyd Schufabrik Meyer & Co GmbH v Klijsen Handel B.V. where the court discussed the characteristic of the ‘consumer’ that Sabel had contemplated:
The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect… It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question’
The slightly more expansive interpretation has since played out in the UK Courts in a series of cases: Premier Brands UK Ltd v. Typhoon Europe Ltd , Pfizer v. Eurofood (UK) Ltd , Associated Newspapers Ltd v. Express newspapers and Coco De Mer Ltd v Chanel Ltd . In Premier Brands Neuberger J set out the three main characteristics of the new concept of confusion which he primarily extracted from the dicta in Sabel; a) visual, aural and conceptual similarity bearing in mind the dominant characteristics of the mark b) distinctiveness of the mark and c) degree of similarity of goods which the mark is used on . The widening of the concept is argued by a number of commentators to have deleterious effects , we can discount those writers who argue that it creates an anti-competitive monopoly if we view the whole of the justifications of trade mark law. However the critique offered by some writers such as Rothman is more sophisticated they argue the expansion represents attention to the rights of the trademark holder at the expense of consumers best interests, she uses a number of US cases to highlight how legal actions by trade mark holders can be used to eliminate competition in an uncompetitive manner and thus abuse their position of power.
Tags: anachronistic, bodies of law, case law, different fashion, directive 89, english common law, lanham act
