Double identity

Double identity refers to the situation in which a sign identical to the trade mark is used for goods or services identical to those for which it is registered. Article L. 713-2 of the French Intellectual Property Code prohibits such use without requiring proof of a likelihood of confusion, and Article 9(2)(a) of Regulation (EU) 2017/1001 lays down the same rule for the European Union trade mark. The EU texts present this protection as absolute, but the case law of the Court of Justice has defined its contours.

Identity of signs and of goods

Identity is construed strictly. The Court of Justice of the European Union holds that a sign is identical to the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark, or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer. The addition of a word, the change of a letter or a perceptible stylisation tips the analysis towards similarity and likelihood of confusion. Identity of goods is assessed by reference to the specifications, the goods actually marketed falling within the specification of the earlier trade mark, and not by reference to the Nice classes.

The requirement of harm to the functions of the trade mark

Dispensing with proof of likelihood of confusion does not make protection unconditional. The Court of Justice of the European Union holds that the proprietor may prohibit the use of an identical sign only if that use affects or is liable to affect one of the functions of the trade mark, whether the essential function of guaranteeing origin or the functions of communication, investment or advertising. In cases of double identity, harm to the origin function is generally presumed, but the question is open in particular situations such as comparative advertising, advertising keywords or the use of the sign for purely descriptive purposes, where the origin function may not be affected.

Effects in litigation

Double identity is the configuration most favourable to the proprietor. It dispenses with the comparative analysis of signs and goods, simplifies proof of trade mark infringement and serves as the preferred basis for urgent measures, customs detention and criminal prosecution, slavish reproduction being in practice the hallmark of counterfeit goods in the ordinary sense. The defendant can escape only by contesting identity, by relying on a limitation of the right such as exhaustion, necessary reference or descriptive use, or by arguing that the use does not take place in the course of trade.

Key points

Where both sign and goods are identical to the trade mark and its goods, the proprietor need not prove likelihood of confusion. Identity is construed strictly, and the use must still harm one of the functions of the trade mark, which is almost always the case. When faced with slavish reproduction, act quickly, giving priority to the provisional and customs measures that this configuration makes particularly effective.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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