Book review: The Confusion Test in European Trade Mark Law

The Confusion Test in European Trade Mark Law by Ilanah Fhima (Reader, University College London – and former Kat!) and Dev S. Gangjee (Professor, University of Oxford) was the winner of the IPKAT Best Book on Trade Mark Law 2019 and this Kat is pleased to provide you with her review:

The doctrine of likelihood of confusion is the core infringement test for trade mark law. This book is the first comprehensive and systematic account of the EU confusion test – looking at its application by the European Union Intellectual Property Office (EUIPO), by national courts, and by the CJEU. The authors set out to articulate a clear set of rules that - they argue - are being consistently applied by European courts and tribunals, inclusive of the sub-factors that might be applied in specific circumstances.

Our aim in this work is to cast light on the many factors that contribute to the multifactor global appreciation test for likelihood of confusion.

The book is beautifully presented. It includes a great number of images that assist in the ease of understanding as well as, of course, making it a far more interesting endeavour. Whilst rigorous in its examination, it is written with an elegance that is rarely found in such exhaustive texts, making it a pleasure to read!

Here are more details on the treasures to be found in each of the eight chapters:

1: Introduction: The Likelihood of Confusion

The first chapter begins by providing some background on what likelihood of confusion is, where it fits into the wider trade mark system and what the future might hold in this area. It sets out the causes of action and details the meaning of likelihood of confusion. In terms of the future, Ilanah and Dev predict three exciting developments: the relevance of empirical assessments of confusion; the extent to which psychology should inform trade mark law and the use of artificial intelligence and machine learning.

2: Similarity of Marks

Chapter 2 details the various tests in relation to similarity of marks; such as visual, aural and conceptual. In particular, it systematically analyses how the courts and tribunals have used these conceptual tools established by the CJEU to determine whether marks are similar. In doing so, it eliminates uncertainty around, for example, the distinctive and dominant components of marks and how these components might be compared. A thorough analysis of the case law is presented and demonstrated with illustrative images of the relevant marks.

Likelihood of Cat-confusion
Image: Hefin Owen

3: Composite Marks

Chapter 3 addresses the special case of complex, or composite, marks - that consist of different elements such as words and images (although it can also include only words). This chapter highlights the wide and yet indeterminate definition of exactly what does or does not constitute a composite mark, immediately demonstrating the need for a clear definition to ensure that like cases are treated consistently. The second part of this chapter covers the general principles when comparing marks, recognising that the CJEU undertakes a difficult balancing act in doing so. The third part of the chapter – the principles in practice – explains how the courts and tribunals apply the general principles to specific types of composite marks.

4: Similarity of Goods and Services 

An action for likelihood of confusion requires that the parties’ goods or services are either identical or similar. Chapter 4 focuses on the factors considered when assessing whether goods or services are similar. There is careful analysis of each factor, as well as recognition of their interrelated nature and the need to balance these factors. The authors identify the need to ensure that the ultimate question is always kept in sight – are the good similar enough to cause confusion? Rather than engaging in an overly analytical discussion of the relationship between the goods.

5: Distinctiveness of the Marks

The authors argue that the role of distinctiveness is the least understood element of the likelihood of confusion analysis. Whilst the idea that the more distinctive a mark the more likely confusion has been repeatedly accepted by the CJEU, it is highly criticised. Chapter 5 explains the role of distinctiveness in the assessment of confusion and its impact through examples of levels of distinctiveness that have, and have not, enabled enhanced protection.

...Distinctiveness is the enigma of likelihood of confusion… yet its role is routinely downplayed... 

6: Assessing Likelihood of Confusion

Chapter 6 delves into the additional factors under the third limb of the test for likelihood of confusion, setting out the general approach under EU trade mark law to assessing the risk of confusion, based on a global assessment, whilst identifying the different types of confusion and the relevant public. Subsequently the ‘likelihood’ standard is discussed, including the extent to which proof of actual confusion has limited relevance – since the test is viewed through the eyes of the average consumer, the authors argue that empirical evidence establishing actual confusion is neither necessary nor desirable.

7: The Timing of Confusion

Whilst most cases assess confusion at the point of sale, this chapter focuses on those which establish liability for confusion that occurs prior to purchase transaction and may even be corrected before the transaction (initial interest confusion) and confusion occurring after a product is purchased (post-sale confusion). After a thorough analysis of these types of confusion, the authors argue that basing infringement solely upon initial interest or post-sale confusion goes too far. Furthermore, they suggest that it would be more helpful to use the labels “material or operation confusion”.

8: Non-Traditional Marks and the Likelihood of Confusion

Lastly, chapter 8 maps the relatively unexplored terrain, demonstrating how the likelihood of confusion test can be extended to disputes involving colour, shape, and other non-conventional marks.

This comprehensive and extensive coverage of the doctrine of likelihood of confusion is essential reading for those practising, researching or working within European Trade Mark Law. It is no wonder that it was voted IPKAT Best Book on Trade Mark Law 2019! It is an admirable body of work and a valuable contribution to trade mark literature and law.

Publisher Oxford University Press
Hardback £125.00
ISBN: 9780199674336
Extent: 320 Pages, 246x171mm
Also available as an ebook.