Originally published December 2005
Probably one of the most subjective areas of trade mark law is the question of when are two trade marks confusing similar. Whether one trade mark will be confused with another is dependent on a number of factors; the sound of the respective marks, the visual impression of the marks, the conceptual meaning of the marks and the type of goods or services to which the trade marks are applied, amongst many other factors.
Over the years a number of guiding principles have developed to help in this tricky area of practice. In the United Kingdom, it has for many years been an accepted principle of trade mark practice that the addition of matter to a registered trade mark, which does not alter the meaning and character of the combined mark, will not lead to the later mark being deemed different to the registered trade mark. For example, a well known case from the nineteen sixties held that the mark BULOVA ACCUTRON was confusingly similar to the registered trade mark ACCURIST. BULOVA was the house mark of the defendant and the court held that the public would view the mark BULOVA ACCUTRON as two separate marks. ACCUTRON and ACCURIST were similar and thus infringement was found. However, this practice has never been tested before the European Court of Justice (ECJ), until now.
On the 6th October 2005, the ECJ considered the matter of whether the marks THOMSON LIFE and LIFE were confusingly similar. Medion AG (‘Medion’) is the owner in Germany of the trade mark LIFE for leisure electronic devices. Thomson Multimedia Sales Germany & Austria GmbH (‘Thomson’) forms part of one of the largest companies in the world in the leisure electronic devices sector. Thomson began marketing its products under the mark THOMSON LIFE.
In July 2002, Medion brought an action before the Landgericht (Regional Court) of Dusseldorf for trade mark infringement. The Landgericht rejected the application on the ground that there was no likelihood of confusion between the marks THOMSON LIFE and LIFE. Medion appealed the decision to the Oberlandesgericht (Higher Regional Court) Dusseldorf which decided to refer the matter to the ECJ for consideration.
The Oberlandesgericht commented that the current case law of the German Federal Court of Justice was based on a theory known as 'Pragetheorie' (theory of impression conveyed). Pragetheorie holds that in order to assess whether two marks, which contain a common element, are similar it is necessary to consider the overall impression conveyed by each of the two marks and to ascertain whether the common component characterises the composite mark to the extent that the other components are largely secondary to the overall impression of the mark. There will be no likelihood of confusion if the common component merely contributes to the overall impression of the sign. It will not matter whether the trade mark incorporated still has an independent distinctive role in the composite mark.
Under the Pragetheorie the marks THOMSON LIFE and LIFE would be held distinct from each other, as the word LIFE does not characterise the THOMSON LIFE mark, a function which is fulfilled by the word THOMSON. However, it will be recalled that such an outcome would be contrary to the practice in the United Kingdom when considering the same comparison of marks. What would the ECJ find on this matter?
Although the ECJ made no explicit reference to the Pragetheorie in its findings, it effectively rejected this principle of comparing marks. In its submissions to the court, Medion argued that the Pragetheorie enabled registered trade marks to be usurped by simply adjoining the mark to the name of the manufacture. Following such a principle would be contrary to the basic tenet of trade mark law that trade marks must serve as an indications of origin. Medion effectively argued that if the use of THOMSON LIFE and LIFE were allowed to coexist that neither mark could fulfil its essential function to identify the goods of one trader from those of another.
The ECJ reiterated that when marks are compared there must be a global appreciation of the likelihood of confusion, in relation to the visual, aural and conceptual similarity of the marks in question. The comparison of marks must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods and services in question plays a decisive role in the global appreciation of the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
Marks must be compared as a whole
The ECJ held that the comparison of marks is more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not in certain circumstances, be dominated by one or more of its components.
The ECJ further held that beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case where an earlier trade mark is used by a third party in a composite sign includes the name of the company of the third party, which still has an independent distinctive role in the composite sign, it may not necessarily constitute the dominant element. In such a case the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.
Therefore, although the word THOMSON is a distinctive mark in itself it does not totally dominate the composite mark THOMSON LIFE and the word LIFE is still an important and distinctive element of the composite mark. As a result, it would be quite possible for the public to associate the marks THOMSON LIFE and LIFE.
The ECJ made it clear that its findings in this case were to be limited to when consideration was given to elements within composite marks of normal distinctiveness. Therefore, where a composite mark consists of a highly distinctive element and a common element with another mark which has low distinctiveness, it is much more likely that the marks will found different from each other.
It would appear that the Pragetheorie may have to be consigned to the dustbin of trade mark practice. The ECJ seems to be following a line much more similar to the established practice in the UK. Therefore, the addition of a house mark or company name to a registered trade mark of average distinctiveness will not avoid the composite mark being deemed confusingly similar to the registered mark. The situation may be different where the registered mark has low distinctiveness, but matters are not as straightforward as the Pragetheorie might suppose.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.