• EUROPEAN PERSPECTIVES

    What is an identical mark?

    The European Court of Justice has recently addressed the important question of when a later mark or sign is identical with an earlier mark for the purposes of registration and infringement.

    Under Article 4(1)(a) of the Trade Mark Harmonisation Directive, a trade mark shall not be registered if it is identical with an earlier trade mark and both sets of goods or services are also identical. Under Article 5(1)(a) of the Directive, the owner of a registered trade mark can prevent the use of any sign which is identical with the earlier mark, provided the infringing goods or services are also identical with those registered. In the case of such identity, it is not necessary for a likelihood of confusion to be established for the owner of the earlier right to succeed. Hence the importance of the issue before the Court.

    In the case before the ECJ (LTJ Diffusion v Sadas Vertbaudet), LTJ owned a French trade mark registration for a handwritten form of the name Arthur together with a dot.

    The mark was registered for class 25 goods including boots, shoes and slippers. Sadas operated a mail order business and sold children’s clothing and accessories in France under the trade mark ARTHUR ET FÉLICIE. Sadas also owned a French trade mark registration for the mark in class 25. LTJ sued Sadas for trade mark infringement and also sought to cancel their (Sadas’) registration. One of the grounds relied on by LTJ in the infringement action was the French equivalent of Article 5(1)(a), whilst in the cancellation action it was the French equivalent of Article 4(1)(a). In both cases, LTJ’s case relied on a finding that the two marks were identical.

    The French Court asked the ECJ for guidance on the question of the identity of marks in trade mark opposition or cancellation and infringement cases. The Court ruled on the issue in the terms set out below:

    • The interpretation of an identical mark should be the same for Article 4(1)(a) and Article 5(1)(a) of the Directive. In other words, whether two marks were being compared for the purposes of registrability or whether an earlier mark and a later sign were being compared for the purposes of infringement, the decision should be the same.

    • For the purposes of infringement (Article 5(1)(a)), a sign is identical with the earlier trade mark where it reproduces, without any modification or addition, all the elements constituting the earlier mark or where, when viewed as a whole, it (the sign) contains differences so insignificant that they may go unnoticed by an average consumer.

     

    Comment

    In recent trade mark infringement actions heard before the English High Court, the later sign Decon-Ahol has been said to be identical with the registered mark Decon (Decon Laboratories v Baker Scientific) and the later sign William R. Asprey, Esq has been viewed as identical with Asprey (Asprey & Gerrard v WRA (Guns)). If these cases had been heard as oppositions before the UK Trade Mark Office, it is clear that, under the practice followed by that national trade mark authority, identity between the two marks would not have been found.

    This difference in approach between the Court and the Trade Mark Office results from the difference in the wording between Sections 5(1)(a) and 10(1)(a) of the UK Trade Marks Act (equivalent to Articles 4(1)(a) and 5(1)(a) of the Directive) and the divergence in interpretation that this has produced. In Section 5, the test for registrability of a trade mark is to compare the trade mark applied for and the earlier trade mark. By contrast, in Section 10, the test for infringement is to compare the sign in use and the earlier registered mark.

    In the ECJ ruling discussed above, the Court made no distinction between the different wording of Articles 4(1)(a) and 5(1)(a). It was assumed that a comparison of marks for identity would produce the same result whether the comparison was for registrability or infringement purposes. It is sincerely to be hoped that, as a result of the Arthur case, the English Courts will alter their traditional method of comparing earlier marks and later signs. It is inconceivable, in the writer’s view, that, under the test set out by the ECJ, Decon-Ahol could be viewed as identical with Decon or that William R. Asprey, Esq could be found to be identical with Asprey for the purposes of infringement (or registrability).

    Having said that, the ECJ’s ruling does leave the door open for the owners of earlier trade mark rights to argue that certain similar marks (or signs) are in fact identical, if any differences are so insignificant that they will not be noticed by an average consumer. This broadening of the definition of identity is to be regretted as it introduces an unnecessary level of uncertainty to the issue. How insignificant will the differences have to be? For example, will Origin be viewed as identical with Origins? What about Premier (for luggage) and Premier Luggage, Vantage and Vantage Records Points or Think Pad and Thinkpad?

    In the majority of cases, the decision on identity of marks (or signs) will not be crucial because, if they are sufficiently similar, a finding of a likelihood of confusion will inevitably follow even if identity is found to be absent. It is submitted, however, that a better interpretation of identical marks/signs for the purposes of Articles 4(1)(a) and 5(1)(a) of the Directive would have required strict identity. Any differences, however small, would then lead to the matter being decided under the head of similarity (of marks/signs) and the requirement of a likelihood of confusion.