Likelihood of Confusion in Trademarks under EU and German Law

The likelihood of confusion in trademarks is a central aspect of trademark law as it forms the basis for granting trademark protection and protection against unfair competition. Both European and German trademark law have developed specific criteria to assess the likelihood of confusion between trademarks. This article explores the legal foundations, the application of these principles, and provides practical examples for illustration.

Legal Foundations and Principles of Likelihood of Confusion

European Trademark Law (EU Trademark Regulation):

In European trademark law, the likelihood of confusion is regulated in Article 8(1)(b) of Regulation (EU) 2017/1001 on the European Union trademark (EUTMR). This article states that a trademark shall not be registered upon opposition by the owner of an earlier trademark if, because of the identity or similarity of the trademarks and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public. The key factors are:

• Similarity of the Trademarks: The similarity is assessed in three dimensions: visual, phonetic, and conceptual. The overall impression created by the trademark on the average consumer, who is reasonably well-informed and reasonably observant and circumspect, is considered.
• Similarity of Goods and Services: The goods and services need not be identical; it suffices if they are similar. Classification is done according to the Nice Classification, an international system for classifying goods and services.
• Reputation of the Earlier Trademark: Trademarks with a significant reputation enjoy extended protection. This includes protection against dissimilar goods and services if the use of the later trademark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.

German Trademark Law:

German trademark law, governed by the Trademark Act (MarkenG), follows similar principles. According to § 14 MarkenG, there is a likelihood of confusion if a trademark is identical or similar to an earlier trademark or commercial designation and the similarity of the goods or services could lead to confusion. The Federal Court of Justice (BGH) has developed detailed criteria in its case law:

• Dominant Elements: The assessment of similarity focuses on the dominant and distinctive elements of a trademark. These are the elements most likely to be remembered by the average consumer.
• Overall Impression: The overall impression is decisive, and minor differences may not be sufficient to exclude a likelihood of confusion.
• Risk of Confusion: The risk of confusion is influenced by the distinctiveness of the earlier trademark and the similarities of the goods or services involved.

Practical Examples to Illustrate

Example 1: Phonetic Similarity in Similar Services

A case of phonetic confusion could occur if a company uses the trademark “TempoNet” for internet services and another company uses the name “TempoWeb” for similar services. Despite the different endings “Net” and “Web,” the phonetic proximity could establish a likelihood of confusion, given the identical nature of the services.

Example 2: Visual Similarity in Different Goods

Consider a hypothetical example where a company has registered the trademark “Luxstar” for luxury watches, and another company uses the trademark “Luxstar” for high-end leather bags. Even though the products are different, the visual identity of the trademarks could create a likelihood of confusion, especially if both companies operate in the high-end market and maintain a similar brand image.

Example 3: Conceptual Similarity in Complementary Goods

Another example could involve the trademarks “GreenGarden” and “GreenYard,” where one trademark is used for garden tools and the other for garden furniture. The conceptual similarity and the thematic proximity of the goods could create a likelihood of confusion, as consumers might assume both brands originate from the same company.

Legal Precedents and Decisions

Lloyd vs. Klijsen (CJEU, Case C-342/97)

In this case, the Court of Justice of the European Union (CJEU) ruled that the overall impression created by the trademark on the average consumer is decisive in assessing the likelihood of confusion. It emphasized that even inattentive consumers should be taken into account, particularly concerning everyday products.

BGH “Puma/Sproting”

The Federal Court of Justice ruled that even with different written representations, phonetic similarity can establish a likelihood of confusion if the pronunciation of the trademarks is similar. The trademark “Puma” was confused with the trademark “Sproting,” highlighting the importance of phonetic similarity.

Recommendations and Legal Consultation

Considering the legal framework and examples provided, there is a clear need for companies to carefully assess the similarity and the associated likelihood of confusion of their trademarks. Here are some recommendations for companies asserting or defending trademark rights:

1. Trademark Search before Registration: Conducting thorough research before registering a new trademark is essential. This includes checking existing trademark registers to ensure no existing trademark rights are infringed. Comprehensive research should also include similar spellings and phonetic similarities.
2. Consideration of Similar Goods and Services: Companies should ensure that their trademarks do not pose a likelihood of confusion not only in relation to identical goods or services but also similar or related products and services. The Nice Classification can provide helpful guidance.
3. Consultation with Specialist Attorneys: The expertise of specialist attorneys in intellectual property law can be crucial to ensure legal security. Specialists can provide a well-founded assessment of the likelihood of confusion and develop strategies to avoid conflicts or enforce existing rights.
4. Protection of Trademarks through Extended Classes: If a company plans to expand its business activities, it is advisable to register the trademark in additional classes to ensure broader protection. This prevents third parties from registering similar trademarks in related areas.
5. Building a Strong Brand Identity: A strong brand identity, built through consistent use and extensive advertising, can increase the distinctiveness of a trademark. This leads to broader protection and makes it easier to enforce rights in cases of likelihood of confusion.

Conclusion and Legal Support

Assessing the likelihood of confusion in trademarks is a complex process that considers a variety of factors. Careful analysis and strategic planning are necessary to effectively protect trademark rights and optimize enforcement opportunities. As specialists in intellectual property law, we are here to assist you in all matters related to trademark applications, analyzing the likelihood of confusion, and enforcing your rights in court and opposition proceedings. Our law firm in Frankfurt am Main offers comprehensive advice and legal support to optimally represent your trademark interests.