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Journal of Intellectual Property Law & Practice Advance Access published online on March 30, 2006
Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpl038
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© The Author (2006). Published by Oxford University Press. All rights reserved.

State of the Art

Strong trade marks and the likelihood of confusion in European law

Jeremy Phillips 1
1 Intellectual Property consultant, Slaughter and May (solicitors); Professorial Fellow, Queen Mary Intellectual Property Research Institute; Editor, European Trade Mark Reports; co-proprietor, IPKat weblog


  Abstract

Legal context One of the fundamental assumptions of trade mark law is that provision should be made to prevent the registration or commercial exploitation of trade marks that are likely to be confused with earlier marks. The justification for this assumption is however unclear. Is it to protect the expectation of its owner that a trade mark will provide a comfort zone, an area within which other traders simply may not enter? Is it to encourage investment in the development of a relationship between the trade mark owner and his prospective customers by offering interference-free marketing opportunities? Is it to protect the efficiency of the market by facilitating the making of decisions by consumers as to which product or process they wish to purchase? Or is it to protect the vulnerable consumer against the personal consequences of his inattention or inability to discern the differences between products or services?

Key points This article examines the development of European law relating to the protection of strong trade marks, those which are highly distinctive or well known, against similar marks that may or may not be likely to cause consumer confusion. It demonstrates the manner in which the European Court of Justice seeks to address the likelihood of confusion in terms which appear to draw more from legal abstractions than from market realities. After giving a favourable review of the controversial decision of that court in the PICARO/PICASSO case, the article lists further issues which European trade mark litigation has so far failed to address.

Practical significance Armed with an understanding of the principles employed by the European Court of Justice, trade mark proprietors in Europe will obtain a better appreciation of the strategies to be used in either challenging competitors' marks in court or adopting commercial measures to combat them.

The author thanks Trevor Cook, Phillip Johnson, David Morris, Ilanah Simon, and Eoin Murdock for their constructive comments on earlier drafts of this piece.
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