Commercial Practice Relevant Criteria Hold ECJ

For comparing and examining the likelihood of confusion, there can be several factors that play a key role in determining the same. The list for the same is not exhaustive and in the latest case the European Court of Justice Rules that the commercial practice is also a relevant factor for the same. When we speak for trademark protection, this protection applies to the defined scope of goods and services under which the trademark is registered. Due to this, there are instances that the trademark is protected several times under various goods or services.

In almost all the cases of a trademark dispute, be it an identical or similar trademark, while ascertaining the likelihood of confusion, there needs to have a precise comparison of goods and services. If the trademark is very similar, then the goods and services must more likely differ. In case, the difference is not up to the mark then there are probable chances of the likelihood of confusion. For the Nice classes which are chosen for the trademark registration, the matter is for the goods and services claimed for and the details thereof.

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Comparing goods and services

While comparing the similarity of goods, all the relevant factors must be taken into account to ascertain what is involved in the case. Mostly, while comparing the goods and services, the distribution channel must be included in the comparison. Not only with the distribution channel, but also the nature and purpose of use must be taken into consideration, taking into account the distinctiveness of the goods. One of the famous judgments of Canon of 1998 can be taken into account for such consideration, owing to its Canon Criteria.

The Present Case

In the present case, the ECJ emphasized that the list is not exhaustive. The trademark is “Hispano Suiza” where the comparison of the goods and services claimed for the trademark is different. The earlier trademark is claimed for “watches and time measuring instruments” (Nice Class 14) and “clothing, footwear, headgear” (Nice Class 25). The later contested mark claimed trademark protection for “automobiles” (Nice Class 12).

The applicant, who is the proprietor of the earlier trademark, contended that the likelihood of confusion is due to the commercial practice. The case was before the EUIPO Board of Appeal. Mainly, because of the fact car manufacturers have a stronger commercial practice and their goods extend to the use of other well-known marks of other goods which can be of clothing, watches and other accessories. Getting on the contrary, the Board of Appeal ruled that the commercial practice is not a relevant criterion. Owing to the fact of similarity criteria established by the case-law of Canon, the applicant did try to replace the set criteria of nature, purpose, use, competitive or complementary relationship – with a new criterion, namely commercial practice. Nevertheless, this was rejected by the Board of Appeal noting that the commercial practice cannot be considered. Nevertheless, the commercial practice can be useful in the context of ground for refusal under Article 8(5) of Regulation No. 207/2009.

ECJ decision

Appealing this case to ECJ, it ruled that the Board of Appeal was wrong stating that the criteria which are outside the scope of cannon criteria can also be considered and the Board of Appeal erred here. Even though the decision of the Board of Appeal also states that factors other than cannon criteria could be taken but did not examine the same. The Board of Appeal erred in excluding the criterion of commercial practice while examining the goods and services.

With increasing trends of marketing, the ECJ rules that the commercial practice is there while assessing the similarity of goods and services in question, not explicitly but implied, where consumer assumes the same identity of producers in such cases. Even if the criteria are one of the original criteria or have been added after, it always remains independent and is equally weighted. As per some of the previous cases, it was held that the similarity may exist even if the goods are not similar but though offered in a coordinated manner. Here the consumer can determine a close link between goods.

Also reiterating the EUIPO’s EU Trademark Examination Guidelines that a business practice of manufacturers extending their commercial practice to neighboring markets is of particular importance for the similarity of goods, the ECJ reiterated that any such extension of business is a common practice thereby emphasizing upon the commercial practice.

Author: Saransh Chaturvedi an associate at IP And Legal Filings,  in case of any queries please contact/write back us at support@ipandlegalfilings.com.