The court considered what would amount to similarity beween two trade mark signs.
Held: So far as concerns the assessment of similarity, what must be concentrated on is the perception of the relevant public. As to a complex mark, that the extent of the distinctiveness of an element of a complex mark will be a guiding factor in determining whether such distinctiveness will dominate the overall impression conveyed by that mark, irrespective of the assessment of the similarity of the two signs. ‘It follows that the distinctive character of the earlier mark cannot have the significance which the applicant argues it should be given in the comparison of the signs in question, as it is not a factor which influences the perception which the consumer has of the similarity of the signs.’
The court identify the relevant types of injury against which a trade mark provides protection: (a) detriment to the distinctive character of the registered mark (‘dilution’ or a weakening of the registered mark’s ability to identify the services as those of the proprietor of the mark): or
(b) detriment to the repute of the mark (‘tarnishment’ which reduces the power of attraction of the registered mark because it has a negative impact on the image of the registered mark): or
(c) taking an unfair advantage (sometimes called ‘free riding’ or an exploitation of the reputation of the registered mark).
Citations:
C-235/05, [2006] EUECJ C-235/05, [2006] ECR I-57
Links:
Cited by:
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 – 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: 11 July 2022; Ref: scu.254376
