Likelihood of confusion

Likelihood of confusion is the central criterion of the ordinary protection of a trade mark. It refers to the risk that the public might believe that the goods or services at issue come from the same undertaking or from economically linked undertakings. Article L. 713-2 of the French Intellectual Property Code prohibits the use of a sign identical or similar to the trade mark for identical or similar goods or services if there exists a likelihood of confusion on the part of the public, which includes the likelihood of association. The same rule appears in Article 9(2)(b) of Regulation (EU) 2017/1001 and in Article 10 of Directive (EU) 2015/2436.

The global assessment

The Court of Justice of the European Union holds that likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, and that those factors are interdependent: a low degree of similarity between the goods may be offset by a high degree of similarity between the signs, and vice versa. The assessment covers the similarity of the signs, the similarity of the goods and services, the distinctive character of the earlier trade mark, whether inherent or acquired through use, and the perception of the relevant public. The more distinctive the earlier trade mark, the greater the likelihood of confusion.

Related notions

Likelihood of association is not an alternative to likelihood of confusion but serves to define its scope: the fact that the public makes a connection between two signs is not enough, the public must be capable of being mistaken as to origin. Indirect confusion, where the public perceives the difference between the signs but attributes the goods to linked undertakings, for instance by assuming a line extension, is on the other hand sufficient. Likelihood of confusion is not required in cases of double identity of signs and goods, nor for the extended protection of a trade mark with a reputation, which rests on the existence of a link and of an injury.

Its role in litigation

Likelihood of confusion underpins the relative ground for refusal in opposition proceedings, the relative ground for invalidity and the infringement action. It is assessed in the abstract in opposition and invalidity proceedings, by comparing the signs as filed and the specifications, and more concretely in infringement proceedings, where the actual marketing conditions may be taken into account. The court is not bound by surveys, but surveys, like evidence of actual confusion, carry weight in the assessment. The absence of confusion observed on the market does not suffice to rule out the likelihood, which remains a forward looking assessment.

Key points

Likelihood of confusion concerns the origin of the goods and is assessed globally, by combining the similarity of the signs, the similarity of the goods and the distinctive character of the earlier trade mark. A mere link in the mind of the public is not enough, whereas a mistake as to the existence of an economic link is. Before any launch, the project should be compared with prior rights taking account of the interdependence of the factors, rather than sign by sign.

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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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