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Likelihood of Confusion: A Common Weakness

The European Trade Mark and Design Network published a ‘Common Communication’ on 2 October 2014 concerning a Common practice agreed on by the national trade mark offices of the European Union, the Benelux Office for Intellectual Property and OHIM regarding the impact of non-distinctive/weak elements of marks in the examination of likelihood of confusion.
This is the fifth in a series of Communications published by the European Trade Mark and Design Network under its Convergence Programme designed to iron out inconsistencies in the practices of the EU Trade Mark offices on some important issues in European trade mark law and practice. Other topics covered under the Convergence Programme include the implementation of the IP Translator decision on the scope of class headings and the breadth of protection of black and white marks. We reported on the Common Practice concerning black and white marks in the Autumn 2014 issue of MakeYour Mark . The Convergence Programme reflects the principle of Harmonization and a need for “clarity” and “legal certainty” with the aim of ensuring that the different offices reach “a similar, predictable conclusion when the same marks and grounds are involved”.

It is not surprising that inconsistencies have arisen as a result of different approaches to the issue of likelihood of confusion. Given that the absence/presence of a likelihood of confusion between two marks determines whether an opposition/invalidity action succeeds under Article 8(1)(b)/Article 53 (1)(a), it is important for practitioners representing clients who do business in Europe to be clear as to how likelihood of confusion is determined throughout the territory.

The Common Communication of 2 October 2014 deals with a specific aspect of likelihood of confusion: the impact of non-distinctive/weak components of marks in the examination of likelihood of confusion. 

The four objectives of the Common Practice are:

1) to define which mark(s) (the earlier mark or the later mark, or both) are subject to an assessment of distinctiveness;
2) to determine the criteria for assessment of distinctiveness;
3) to determine the impact of common elements of low distinctiveness on the likelihood of confusion;
4) to determine the impact of common elements of no distinctiveness on the likelihood of confusion.

Concerning the first objective, the offices agreed that the earlier mark as a whole, as well as all components of both the earlier and the later mark are to be assessed for distinctiveness. However, a certain degree of distinctiveness should be assumed with regard to the earlier mark.

Regarding the criteria for assessing distinctiveness, the Common Practice confirms that when assessing the distinctiveness of marks, whether under absolute or relative grounds, it must be determined whether a minimum level of distinctiveness exists, but under relative grounds, it is also necessary to consider the varying degrees of distinctiveness between the marks of the two parties.
Regarding the third objective, in order to determine the impact of common(identical) elements of low distinctiveness on the likelihood of confusion, the Common Practice states that the trade mark offices need to consider the impact of of non-coinciding elements on the overall impression of the marks, taking into account similarities/differences between these elements and their distinctiveness. A common element of low distinctiveness will not normally on its own lead to a likelihood of confusion, but if the other elements are of the same or a lower level of distinctiveness, or do not impact on the appearance of the mark and the overall impression of the marks is similar, then there may be a likelihood of confusion.

Regarding common elements of no distinctiveness, the Common Practice states that there will be no likelihood of confusion unless the marks also contain other similar elements and the overall impression is that the marks are highly similar/identical.

In an Annex to the Common Communication some examples are provided of marks sharing elements of low or no distinctiveness and the outcome of the comparison. In the following examples:


both for “beauty treatment” in Class 44, the common element, “LUX” is of low distinctiveness. Applying the Common Practice, the non-coinciding elements (MORE- and IN-, DURA- and VITA-) are also of low distinctiveness. However, these elements do impact on the overall appearance of the marks and the overall impression of the marks is dissimilar due to the visual, phonetic and conceptual differences between these elements in the earlier and later marks. Consequently, the outcome reached in both cases in an application of the Common Practice is that there is no likelihood of confusion.

27 offices agreed to implement the Common Practice within 3 months of the publication of the Common Communication. Only time will tell whether the Common Practice has ironed out discrepancies between the approaches of the different offices to the issue of likelihood of confusion between composite marks.