Trade marks with reputation in the EU - The requirement of the link between the signs

The article 8(5) of the EUTMR provides that a “trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where (…) the trade mark has a reputation (…), and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”

For this provision to be applied the following requirements need to be met: 1) a registered trademark with reputation, 2) similarity between the signs, 3) a link between the signs, 4) a risk of injury and 5) the absence of due cause for the use. This article will focus on the third requirement mentioned: the link between the signs.

The link between the signs as a requirement

When applying this provision, after the determination that an earlier registration has reputation and that the signs at conflict bear similarities, and before analyzing the existence of a risk of injury and the absence of due cause, it is necessary to verify if there is a link between the signs. This is so, because the risks of injury (“take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark”) can only happen if the relevant public will establish a link between the marks at conflict.

This link exists when “the contested mark would, in the context of the contested goods and services, bring the earlier reputed mark to mind”.[1]

How to assess the existence of a link between the signs

According to EU case-law, the assessment of the existence of a link between the marks must be appreciated globally with the help of several factors, including:

a)      The level of the reputation of the earlier mark. Of course, the more reputation has the earlier mark, more likely it is that the relevant public will establish a link between the signs, in other words, the more know is mark more probable it is for the relevant public to be reminded of the that mark, when confronted with another one.

b)     The degree of similarity between the conflicting marks. Naturally, the more similar the signs are, the more probable it is the contested one will bring the earlier reputed sign to the mind of the relevant public.[2]

c)      The degree of similarity between the goods and services covered by the contested application and those for which the earlier mark is reputed. Of course, the similarity between the goods and services is not a requirement for the application of the reputation regime. However, when the goods and services are very dissimilar it may have the consequence of the contested mark not bringing the earlier reputed mark to the mind of the relevant public.[3] In our opinion, this factor can only be relevant in very exceptional cases and in combination with the other factors. In other words, we do not believe that this factor alone can in any case be determinant.

d)     Whether the level of distinctive character of the earlier reputed mark is inherent or acquired through use. It is considered that “the more inherently distinctive the prior mark, the more likely it will be brought to a consumer’s mind when encountering a similar (or identical) later mark.”[4] This is understandable: if the distinctive character of the earlier reputed mark is acquired through use, it means that it was previously non-distinctive and used as a generic or descriptive word in relation to the goods and services in question. Therefore, this means that even though the sign has acquired distinctiveness the relevant public still understands and remembers the generic or descriptive meaning of the sign, and, for that reason, the establishment of a link with that earlier reputed sign is less likely.

e)      The existence of likelihood of confusion on the part of the public. If there is likelihood of confusion between the signs, on the part of the public, necessarily, there is a link between them. The inverse is not necessarily true.

Conclusions

While for the application of article 8(1)(b) of the EUTMR a risk of confusion between the marks is needed, meaning that it is likely that the relevant public will mistake one mark for the other, differently, for article 8(5) to be applied, a risk of confusion is not necessary but merely a link between the signs, i.e. that the use of the contested mark is likely to bring the earlier reputed mark to the mind of the relevant public. Therefore, of course, the level of similarity needed for the application of article 8(5) is significantly lower than that necessary for the existence of risk of confusion.[5]

This means that every time there is risk of confusion there is, necessarily, a link between the signs. However, this also means that, when there is no risk of confusion, a link may still exist and, therefore, the application of the reputation regime is still possible. While the existence of risk of confusion results in the existence of a link between the signs, the inexistence of risk of confusion does not result in the inexistence of a link between the marks.

This is a very important notion to be understood as, unfortunately, very often it is possible to find decisions from national IPOs and courts rejecting the application of the reputation regime, based on the argument that there is no risk of confusion between the marks in question. Of course, as seen above, this reasoning is wrong and shall be abandoned by the deciding entities and be replaced by the assessment of the existence or not of a link between the signs, with the help of the factors identified above.