The Trade Marks Act 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation. Kitchin J summarised the principles to be applied when testing for confusion of marks: ‘i) The likelihood of confusion must be appreciated globally, taking account of all the relevant factors. . ii) The matter must be judged through the eyes of the average consumer of the goods in issue, who is deemed to be reasonably well informed and reasonably observant and circumspect . . iii) In order to assess the degree of similarity between the marks concerned the court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements taking into account the nature of the goods in question and the circumstances in which they are marketed . iv) The visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. The perception of the marks in the mind of the average consumer plays a decisive role in the overall appreciation of the likelihood of confusion . . v) The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details . .vi) There is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it . . vii) The average consumer rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect of them he has kept in his mind; further the average consumer’s level of attention is likely to vary according to the category of goods in question . . viii) Appreciation of the likelihood of confusion depends upon the degree of similarity between the goods. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa . . ix) Mere association in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of the assessment . . x) But the risk that the public might believe that the goods come from the same or economically linked undertakings does constitute a likelihood of confusion within the meaning of the section.’
Judges:
Kitchin J
Citations:
[2006] EWHC 529 (Ch), [2006] FSR 42
Links:
Statutes:
First Council Directive 89/104/EEC of 21 December 1988 (to approximate the laws of member state relating to trade marks), Trade Marks Act 1994
Jurisdiction:
England and Wales
Cited by:
Cited – D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas Chd 25-Jan-2008
The claimant alleged infringement by the defendants of its ‘Gola’ trade mark designs. The defendant said the registration was invalid because the stripes on the shoes were not distincive being seen as part of the design of the shoe rather than as an . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 13 July 2022; Ref: scu.239190