This month, we have selected European and French case law focusing on the comparison of the signs and the different criteria used by judges and offices to assess whether or not there is a risk of confusion between the marks for the relevant public.
Different situations have been chosen:
- The scope of protection of simple signs composed of one letter;
- The identical reproduction of a part of the trademark in a complex sign;
- The comparison between two signs of same length.
These decisions show some convergences but also divergences between the decisions of the French and Community offices, although based on the same classic criteria. Among them: the influence of distinctiveness, whether inherent or because of the reputation of the first mark, the comparison of the signs taken as a whole, the perception of the consumer of the descriptiveness of a common element owing to its knowledge of the language used in the trademark at stake.
None of the EU countries national offices applies the theory of foreign equivalents (according to which the Office shall examine the validity of the sign in relation not only to the language or languages spoken in the country where protection is sought, but also in other foreign languages in order to avoid fraudulent registration). This fact obviously makes it difficult to have certain trademarks registered at Community level, offices and courts having no other choice but to uphold oppositions based on national trademarks that would not have been granted in other EU countries because of their descriptiveness.
The decision between protecting its trademark through national filings (including via the Madrid system) or applying for a Community trademark must rely on these criteria to avoid some disappointments and long proceedings.