For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Thursday, 2 December 2010

Likelihood of confusion: too simple to leave to the lawyers?

Earlier this week the poll closed on a simple question: is there a likelihood of confusion between these two figurative marks? By a four-to-one majority, readers of this blog declared that, in their view, the marks were not likely to be confused with one another.  The final figures were as follows: 141 voters said yes, confusion was a likely outcome; 641 (that's nearly 82% of the total 782 votes case) said no.

The poll was inspired by the Kat's surprise at the ruling of the General Court in Case T-35/08 Codorniu Napa v OHIM - Bodegas Ontañon (ARTESA NAPA VALLEY), noted on Class 46 here by Laetitia Lagarde, that there was indeed a likelihood of confusion.  The General Court was not alone in its view, since it upheld the position taken both by the Opposition Division of the Office for Harmonisation in the Internal Market and by the Fourth Board of Appeal.

The IPKat, who was schooled on a primitive pre-harmonisation notion that likelihood of confusion, in common with likelihood of rain -- or indeed any other likelihood that was based on real-world considerations -- was a statement of probability that was based on real facts.  The modern fashion in Europe trade mark legal thinking is that, since "likelihood of confusion" is a term which forms part of the legislation which lawyers apply and interpret, its real significance is as a question of law, not fact.  You define a set of legal criteria which, if satisfied, constitute a legal state of likelihood of confusion; then you tick the boxes for the various criteria. If the right boxes are ticked, then "likelihood of confusion" exists, whether there is a likelihood of confusion or not.

The fact that the concept has been defined in such complex terms, in spite of the admirable brevity of the terminology used in the Community Trade Mark Regulation and the harmonisation directive, is both the result of too many appeals of points of law and the cause of too many more of them -- and even then the application of the facts to the law often produces decisions which are technically correct, as this decision appears to be, but nonsense in the world in which, for example, shoppers look at wine bottles with figurative marks on them such as these.

A consequence of results such as these, however technically correct they may be in legal terms, is that a lot of marks are excluded from registration even though, on a day-to-day basis, it is hard to imagine them causing anyone any problems in commercial terms.  Much is made of the claim that it is too hard to register new marks because of all the old marks that are already there.  If the existing marks took up less space, because more realistic criteria for likelihood of confusion are imposed, there would be less of a problem.

In a more sensible world, asks the mischievous Merpel, would it not be fun to dispense with the ritual of box-ticking and the pompous formality of pseudo-scientific formulations of legal tests of what the relevant consumer can generally determine at a glance?  Why not engage panels of wine-drinkers, chocolate eaters, washing detergent users, health-insurance seekers or whatever and simply ask them?

12 comments:

Natasha said...

I can't even contemplate a likelihood of a "likelihood of confusion" with these two marks. The dominant element in my eyes is the triangle and modern look of Artesa compared to the more classical drawing of Arteso. The overall impression is very different even after a quick glance.

It would be good to back up the results of any legal analysis with surveys of a representative sample of the very consumers who might be confused (or not). I think it is dangerous for the law to lose sight of what it is meant to achieve, or am I just confused?

Peter Smith said...

The main problem here relates to the phonetic comparison of marks that have a strong visual element.

A trade mark applicant has a choice whether to register a plain word or a combined word and device. If the applicant chooses to include the device, that should be treated as an essential feature of the trade mark. It is not fair to the applicant or to third parties that the device element should be simply ignored. If this approach means that a phonetic comparison is not possible or is given less weight, then so be it: we already accept that the same is often true of conceptual comparisons.

TJ said...

The Arteso mark on a bottle: http://tinyurl.com/35jt2st

Anonymous said...

the problem if we did as you suggest is that we'd largely be out of a job! hooray for pompous box ticking rituals!

Anonymous said...

I doggedly hold onto the view that the IPKat used a sleight of claw - or tried to pull the fur over our eyes - by using a picture of the ARTESA mark in which the word ARTESA was almost illegible.

As long as the word-mark element in a compound mark has any real significance, the two marks must be confusingly similar. Take out the verbal element of both, and I wholeheartedly agree that there is no confusion at all.

And why is the word-element so important here? Because:

a) on the wine list in restaurants (are these wines in fact good enough to merit inclusion in a wine list?) you almost never see the whole mark, only the name.

b) arguably this is true also when placing a simple written order over the internet or by email - on fancy websites, of course, the whole mark will be prominently displayed, including its image.

c) when ordering the stuff over the telephone again the problem is similar (who would dream of ordering wine with "I'd like a case of ARTESA wine - you know the one with the red triangle on the label" - and if one did, what would be delivered might just be barrel of Bass!).

Simply assuming that the marks are always displayed next to each other (rather than relying on the average customers imperfect recall) and then finding no likelihood of confusion would not have been right!

Incidentally, the likelihood of confusion would have been much more immediate to the bloggers here if only the word "ARTESA" had been in focus and clearly visible. If that had been so, perhaps even the voting ratio might have been significantly different!

Oh, and for groups of relevant consumers - who'd pay them :-) ???

Jeremy said...

@Anonymous 11.30. You write "I doggedly hold onto the view that the IPKat used a sleight of claw - or tried to pull the fur over our eyes - by using a picture of the ARTESA mark in which the word ARTESA was almost illegible". Indeed, these are the very pictures which the Court used!

George Souter said...

I believe that there is a respectable case to be made for confusion to be regarded as a question of law, pre-grant of a trade mark registration, and for confusion to be regarded as a question of fact in connection with infringement. The advantage of confusion as a question of law pre-grant is to enable trade mark advisers to better advise their clients as to adoption of a trade mark, thus reducing conflicts. The public benefit is to have new registrations granted with a surrounding protective “cordon sanitaire”. The objection to this on the ground that the trademark registers are becoming “overcrowded”, is, simply, nonsense from a linguistic viewpoint. In connection with infringement/passing off of a trade mark right, I seen no equitable departure from the “questions of fact” principles as developed.

There must, of course, be some limits to confusion as a question of law (although I may be unduly influenced here by the old Scots philosophy of “common sense”). I seem to remember an old German case in which FREEZE was held, on a points totting-up system, to be confusingly similar to VAN DER VLIETS, which would appear to be beyond the pale of common sense.

Anonymous said...

@ Jeremy

You have just put the Kat among the pigeons of my arguments - well, a little anyway ...

Anonymous 11.30

Anonymous said...

Anonymous 11.30,

If the word element is so important, why didn't ARTESA have a word mark? They were free to apply for one.

Instead, they chose a device mark in which the device is the dominant factor. Therefore to my mind they should have rights which are commensurate with that fact.

I whole-heartedly agree with the Kat's comments.

Tom Farrand said...

To paraphrase an old adage, why let the facts get in the way of a good judgement?
Isn't asking a panel of consumers known as, er, a "survey"? We all know what the courts think of those.

Mark Schweizer said...

Your summary, Jeremy, is about as fair and balanced as Fox News...

Jeremy said...

@Mark -- I'm looking to stir up some reaction rather than to go for a fair and balanced summary: I leave that to you!

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