In this edition of Make Your Mark, we discuss cases in which the trade marks 101 and 501, Bull and Bulldog, Sky and Skype, Portobello Road No. 171 logo and Porto and Aktivamed and Vamed (plus a distinctive device) have all been found to be confusingly similar. By contrast, the trade marks F1 and F1H20 have been found to be dissimilar, whilst the trade mark Swatchball was deemed not close enough to the famous trade mark Swatch to create the link required when relying on a mark’s reputation.
The only certainty in EU trade mark practice is apparently that there is virtually no certainty in the final outcome of contested proceedings. Overall, however, it is submitted that the trade mark authorities in the EU (national trade mark offices, OHIM and the European Court) tend to be too cautious and too conservative in their views on which trade marks can and cannot coexist on the various trade mark registers. Further, the actual coexistence of two marks on the EU market without any apparent confusion, as in the cases of the trade marks Sky and Skype and Asos and Assos (another recent case discussed in this edition) is dismissed, at least by OHIM and the European Court, on the basis that the coexistence is not “peaceful”. This in spite of up to 10 years of such non-peaceful coexistence.
In the writer’s view, the EU trade mark authorities need to reconsider their policies on the comparison of trade marks when considering a likelihood of confusion (and detriment to reputation). Whilst the coexistence of Asos and Assos on the market may come as a surprise, there are other competing marks that, on the face of it, ought to lead to confusion but that, in fact, do not. One only has to think of Budweiser in the drinks sector.
Of course, there are a number of reasons for such market coexistence; different get-ups and careful advertising being amongst them. Even so, the writer believes that the EU trade mark authorities underestimate the sophistication of most EU consumers and that this leads to decisions on the similarity of marks that are doubtful and take no account of market reality. If trade mark registers are to reflect the situation in the market rather better, then these cautious policies need to change.