ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on interpretation necessary to resolve the case before it, while it is for the national court to apply the rules of Community law, as interpreted by the Court, to the facts of the case under consideration.
It is possible that mere aural similarity between a trade mark and a sign, used for identical or similar products, may create a likelihood of confusion within the meaning of Article 5(1)(b) of First Directive 89/104 on trade marks. The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.
In order to determine the distinctive character of a mark and, accordingly, to assess whether it is highly distinctive, it is necessary to make a global 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 of all relevant factors and, 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. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character.
Gazette 06-Oct-1999, Times 30-Jun-1999, C-342/97, [2000] FSR 77, [1999] IP and T, [1999] ECR I-3819, [1999] ETMR 690, [1999] EUECJ C-342/97
Bailii
European
Cited by:
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Apple Corps Ltd v Apple Computer Inc ChD 8-May-2006
The parties had several years ago compromised an action for trade mark infringement on the basis that the defendant would not use the Apple logo in association with areas of commercial activity, including the sale of ‘work whose principal content is . .
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
Cited – Esure Insurance Ltd v Direct Line Insurance Plc ChD 29-Jun-2007
Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted . .
Cited – Specsavers International Healthcare Ltd and Others v Asda Stores Ltd ChD 30-Jul-2010
The claimant complained of the defendant’s use of its trade marks alleging infringement and passing off when it relaunched its own optician services. Having had advance notice of the details of the proposed campaign, the claimants had launched their . .
Cited – Lewis v Client Connection Ltd ChD 6-Jul-2011
The claimant alleged infringement of his registered trade marks ‘Money Saving Expert’ and associated terms. The defendant operated a service trading as ‘Money Claiming Expert’. Both services included advising those who might wish to claim refunds . .
Lists of cited by and citing cases may be incomplete.
European, Intellectual Property
Updated: 08 January 2022; Ref: scu.162241
