Chapter 12. Registration of trade marks

Philips Electronics NV v Remington Consumer Products

'sign' is 'anything which conveys information'

3 elements of a definition of a trademark

-sign, -capability of graphic representation - capability of distinguishing

s.1 TMA 1994

1 Trade Marks (1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. (2) References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark (see section 49) or certification mark (see section 50).

Art.3 Trade Mark Directive

1. The following shall not be registered or, if registered, shall be liable to be declared invalid: (a) signs which cannot constitute a trade mark; OJ 2008 L299/272008 · Official Journal of the European Union · L299/27 (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; (e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods; (f) trade marks which are contrary to public policy or to accepted principles of morality; (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; (h) trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6 ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the 'Paris Convention'. 2. Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: (a) the use of that trade mark may be prohibited pursuant to provisions of law other than trade mark law of the Member State concerned or of the Community; (b) the trade mark covers a sign of high symbolic value, in particular a religious symbol; (c) the trade mark includes badges, emblems and escutcheons other than those covered by Article 6 ter of the Paris Convention and which are of public interest, unless the consent of the competent authority to their registration has been given in conformity with the legislation of the Member State; (d) the application for registration of the trade mark was made in bad faith by the applicant. 3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration. 4. Any Member State may provide that, by derogation from paragraphs 1, 2 and 3, the grounds of refusal of registration or invalidity in force in that State prior to the date of entry into force of the provisions necessary to comply with Directive 89/104/EEC, shall apply to trade marks for which application has been made prior to that date.

s.3 TMA 1994

3 Absolute grounds for refusal of registration (1) The following shall not be registered— (a) signs which do not satisfy the requirements of section 1(1), (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. (2) A sign shall not be registered as a trade mark if it consists exclusively of— (a) the shape which results from the nature of the goods themselves, (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape which gives substantial value to the goods. (3) A trade mark shall not be registered if it is— (a) contrary to public policy or to accepted principles of morality, or (b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service). (4) A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of [EU] law. (5) A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems). (6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.

sub-ss. 1-3 s.5 TMA 1994 (the triad of protection)

5 Relative grounds for refusal of registration (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected. (2) A trade mark shall not be registered if because— (a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. (3) A trade mark which— (a) is identical with or similar to an earlier trade mark, . . . (b) . . . shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a [European Union] trade mark [or international trade mark (EC)], in the [European Union]) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Re James's Trade Mark

A product could not be a trade mark of itself

Art.2 Trade Mark Directive

A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Sieckmann v Deutsches Patent- und Markenamt, ECJ

Any message capable of perception by the senses can be a trade mark, provided it is potentially capable of distinguishing

Windsurfing Chiemsee Produktions (WSC) v Boots

Aquirement of distinctive character. 45 Article 3(3) therefore constitutes a major exception to the rule laid down in Articles 3(1)(b), (c) and (d), whereby registration is to be refused in relation to trade marks which are devoid of any distinctive character, descriptive marks, and marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade. 46 Secondly, just as distinctive character is one of the general conditions for registering a trade mark under Article 3(1)(b), distinctive character acquired through use means that the mark must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings. 47 It follows that a geographical name may be registered as a trade mark if, following the use which has been made of it, it has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings. Where that is the case, the geographical designation has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trade mark. 48 Windsurfing Chiemsee and the Commission are therefore right to assert that Article 3(3) does not permit any differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings. 49 In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings. 50 In that connection, regard must be had in particular to the specific nature of the geographical name in question. Indeed, where a geographical name is very well known, it can acquire distinctive character under Article 3(3) of the Directive only if there has been long-standing and intensive use of the mark by the undertaking applying for registration. A fortiori, where a name is already familiar as an indication of geographical origin in relation to a certain category of goods, an undertaking applying for registration of the name in respect of goods in that category must show that the use of the mark - both long-standing and intensive - is particularly well established.

Sieckmann v Deutsches Patent- und Markenamt, ECJ

Capability of graphic representation 45 In those circumstances, article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically. 46 That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. 47 Such an interpretation is required to allow for the sound operation of the trade mark registration system. 58 First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. 49 Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. 50 On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks. 51 On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties. 52 If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible. 53 Furthermore, in order to fulfil its role as a registered trade mark, a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark's registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable. 54 Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective. *55 In the light of the foregoing observations, the answer to the first question must be that article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.*

Philips Electronics BV v Remington Consumer Products, ECJ

Capable of distinguishing If a trade mark has distinctive character (either inherently or as a result of use) then it must be capable of distinguishing. 'Capable of distinguishing' in Article 2 simply means that the sign must be able to differentiate the goods of one undertaking from another and so fulfil its essential function of guaranteeing the origin of the product. Could the sign enable the public (i.e. consumers) to decide that the goods bearing the mark come from just one business which is responsible for the quality of the goods?

ORLWOOLA Trade Mark (1909)

Deceptive mark If the goods possess the characteristics described by the known word (here the goods were textiles) then the mark is unregistrable as being totally descriptive, but if the goods do not possess those characteristics, then the mark is deceptive.

OHIM v Wm Wrigley Junior Co (DOUBLEMINT)

Descriptive signs. ECJ made plain (at para.32) that an application will be refused under s.3(1)(c) if at least one of the possible meanings of the mark designates a characteristic of the goods or services concerned.

Procter & Gamble Company v OHIM (BABY DRY)

Descriptive signs. Where the mark consists of a number of elements, it is to be considered as a whole. Hence, in BABY DRY the ECJ considered that the mark (a combination of two known words) was 'syntactically unusual' because the normal way in English of referring to the characteristics of babies' nappies would have been to refer to a 'dry baby'.

Campina Melkunie BV v Benelux-Merkenbureau (BIOMILD)

Descriptive signs. Where there is a new word (a 'neologism') which consists of a combination of known words, themselves descriptive, the new word must itself be looked at overall to see if it describes the goods.

Philips Electronics BV v Remington Consumer Products, ECJ

Distinctive character The test is that the mark is to be considered in relation to the goods or services through the eyes of the relevant public to see if it enables members of the public to distinguish the product in question from those having a different trade origin. Does the relevant section of the public perceive the sign as a trade mark, taking into account that the average consumer is reasonably attentive and makes an overall assessment of the mark? The test is therefore a concrete one (i.e. in relation to the goods/services of the application), taking into account all the relevant factual circumstances.

Nichols plc v Registrar of Trade Marks, ECJ

Distinctive character. Common surnames. 34. The answer to the first four questions must therefore be that, in the context of Article 3(1)(b) of Directive 89/104, the assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically, in accordance with the criteria applicable to any sign covered by Article 2 of the said directive, in relation, first, to the products or services in respect of which registration is applied for and, second, to the perception of the relevant consumers.

SatellitenFernsehen GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (SAT.2), ECJ

Distinctive character. Primary function of TM. Creativity and imaginativeness. All elements must be considered. SUMMARY 1. Each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 on the Community trade mark is independent of the others and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question. (see para. 25) 2. The public interest underlying Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, concerning the ground for refusal based on the lack of distinctive character of a mark, is aimed at the need not to restrict unduly the availability of that trade mark for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought. Furthermore, in view of the extent of the protection afforded to a trade mark by the regulation, the public interest underlying that provision is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. By contrast, a criterion which is not the yardstick against which Article 7(1)(b) should be judged is the criterion according to which trade marks which are capable of being commonly used, in trade, for the presentation of the goods or services in question may not be registered, which is a criterion that is relevant in the context of Article 7(1)(c). Furthermore, taking the view that the provision of Article 7(1)(b) pursues an aim which is in the public interest, which requires that the signs they refer to may be freely used by all, involved deviating from taking into account the public-interest criterion referred to above. (see paras 23, 26-27, 36) 3. When assessing the distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation No 40/94 on the Community trade mark, and where a trade mark comprising words or a word and a digit is involved, the distinctiveness of each of those terms or elements may be assessed, in part, in relation to each of those words or figures taken separately but must, in any event, depend on an appraisal of the whole which they comprise. Indeed, the mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character. It would be wrong to interpret that provision by assessing the distinctive character of a phrase composed of several elements essentially by means of a separate analysis of each of its elements, and by taking as a basis, for that purpose, the presumption that elements individually devoid of distinctive character cannot, on being combined, present such a character rather than the overall perception of that term by the average consumer, and by examining the impression as a whole produced by the term only secondarily, refusing to give any relevance to aspects such as the existence of an element of imaginativeness, which ought to be taken into account in such an analysis. (see paras 28-29, 35) 4. Registration of a sign as a Community trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings. Where a trade mark which does not fall foul of the ground of refusal laid down in Article 7(1)(c) of Regulation No 40/94 is none the less devoid of distinctive character within the meaning of Article 7(1)(b) thereof, the Office for Harmonisation in the Internal Market (Trade marks and Designs) must also set out the reasons why it considers that that trade mark is devoid of distinctive character. In that regard, the frequent use of trade marks consisting of a word and a number in a given sector indicates that that type of combination cannot be considered to be devoid, in principle, of distinctive character. (see paras 41-42, 44) 5. Although the way in which the term SAT.2', for which registration as a Community trade mark is applied for, for the following services in Classes 38 and 41 of the Nice Agreement - Class 38: Wireless or hard-wire networked broadcast of radio and television transmissions/programmes; broadcasting of film, television, radio, video text and teletext programmes or transmissions; arranging and allocating of user passwords for users of various communication networks; telecommunications; gathering, delivering and transmitting messages, press reports (including using electronic means and/or by computer); transmission of sound and images by means of satellites; broadcasting Pay TV including video on demand, including for others on a digital platform; services relating to telecommunications; providing information to others; dissemination of information via wireless or cable networks; on-line services and transmissions, namely transfer of information and messages including E-mail; operation of networks for the transfer of messages, images, text, speech and data; broadcasting of teleshopping programmes'; - Class 41: Production, reproduction, showing and rental of films, videos and other television programmes; organisation and conducting of shows, quizzes and musical events and conducting competitions in the entertainment and sporting field, including for recordings or being live broadcasts on radio or television; production of television and radio advertising broadcasts including associated prize game broadcasts; production of film, television, radio, teletext and videotext programmes or transmissions, radio and television entertainment; recording, transmission, storing, processing and reproduction of sound and images; organising radio and television broadcasts/programmes; production of teleshopping programmes'; is made up is not unusual, in particular as regards the perception which the average consumer may have of services falling within the communications industry, and the juxtaposition of a verbal element such as SAT' with a digit such as 2', separated by a.' does not reflect a particularly high degree of inventiveness, those facts are not sufficient to establish that such a word is devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

Libertel Groep BV v Benelux-Merkenbureau, ECJ

Distinctiveness. Colour may be a distinctive TM SUMMARY 1. A colour per se is capable of constituting a trade mark within the meaning of Article 2 of First Directive 89/104 relating to trade marks provided that it is a sign which is capable of graphic representation and of distinguishing the goods or services of one undertaking from those of other undertakings. see paras 23, 42 2. A declaration recorded in the minutes of the Council on the occasion of the adoption of a directive cannot be used for the purpose of interpreting a provision of that directive where no reference is made to the content of that declaration in the wording of the provision in question and therefore has no legal scope. see paras 25-26 3. A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code. see para. 68, operative part 1 4. The large number and detailed nature of the obstacles to registration of a trade mark set out in Articles 2 and 3 of First Directive 89/104 relating to trade marks, and the wide range of remedies available in the event of refusal, indicate that the examination carried out by the competent authority at the time of the application for registration must not be a minimal one. It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. For reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered. see para. 59 5. In assessing the potential distinctiveness, within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, of a given colour as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought. see para. 60, operative part 2 6. In the case of a colour per se, distinctiveness without any prior use, within the meaning of Article 3(1)(b) of First Directive 89/104 relating to trade marks is inconceivable save in exceptional circumstances. However, even if a colour per se does not initially have any such distinctive character, it may acquire such character in relation to the goods or services claimed following the use made of it, pursuant to Article 3(3) of the Directive. That distinctive character may be acquired, inter alia, after the normal process of familiarising the relevant public has taken place. see paras 66-67 7. A colour per se may be found to possess distinctive character within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing that product or service from those of other undertakings. see para. 69, operative part 3 8. The fact that registration as a trade mark of a colour per se is sought for a large number of goods or services, or for a specific product or service or for a specific group of goods or services, is relevant, together with all the other circumstances of the particular case, to assessing both the distinctive character, within the meaning of Articles 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, of the colour in respect of which registration is sought, and whether its registration would run counter to the general interest in not unduly limiting the availability of colours for the other operators who offer for sale goods or services of the same type as those in respect of which registration is sought. see para. 71, operative part 4 9. In assessing whether a trade mark has distinctive character within the meaning of Article 3(1)(b) and (3) of First Directive 89/104 relating to trade marks, the competent authority for registering trade marks must carry out an examination by reference to the actual situation, taking account of all the circumstances of the case and in particular any use which has been made of the mark.

Koninklijke KPN Nederland NV v Benelux-Merkenbureau (POSTKANTOOR), ECJ

Distinctiveness. Several classes of goods. Where the trade mark application relates to several classes of goods and services, the Registry is required to consider s.3(1)(b) in relation to each item on the list

Audi AG v OHIM, ECJ

Distinctiveness. Slogans. An example of a successful application to register a slogan ('Vorsprung durch Technik') as a Community Trade Mark

Intel Corporation Inc v CPM United Kingdom Ltd, ECJ

Dulition of TM - detriment to the distinctive character of the mark ('whittling away' or 'blurring'): the mark's ability to identify the goods or services for which it is registered is weakened due to the 'dispersion of identity' - detriment to the repute of the mark ('tarnishment' or 'degradation'): the goods or services for which the identical or similar sign is used are perceived by the public in such a way that the trade mark's power of attraction is reduced, particularly where the third party's goods or services possess a characteristic or quality which is liable to have a negative impact on the image of the mark; - taking unfair advantage ('parasitism' or 'free-riding'): the third party seeks by their use of the senior mark to ride on its coat-tails in order to benefit from the power of attraction, the reputation and prestige of the mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor in order to create and maintain the mark's image.

LTJ Diffusion SA v Sadas Vertbaudet SA, ECJ

Identical TMs Because of the absolute protection afforded by s.5(1) (and indeed its counterpart in infringement, s.10(1)), 'identity' must be strictly interpreted and requires that the two marks be the same in all respects. For a junior mark to be identical to a senior mark, it must reproduce, without any modification, all the elements of the latter. However, the Court added that the comparison (which must be an overall comparison) is to be made through the eyes of the well-informed, reasonably observant and circumspect consumer who will rarely have the opportunity to compare the two marks side by side. Consequently, insignificant differences may go unnoticed.

JESUS Trade Mark Application, 2005

Marks contrary to public policy. Likely to cause offence to a significant section of the public

Re Ghazilian's Trade Mark Application

Marks contrary to public policy. The outrage or censure must occur among an identifiable section of the public. A higher degree of outrage among a small section of the community may well suffice.

Medion AG v Thomson Multimedia Sales, ECJ

Similarity of TM ECJ offered advice on how LIFE (the senior mark) should be compared with THOMSON LIFE when both marks were used on electronic goods. It said that overall assessment of the two marks would make the notional consumer think that the owner of LIFE had expanded its business, leading to indirect confusion. It didn't matter that LIFE was not the dominant part of THOMSON LIFE. To require that the senior mark formed the dominant part of the junior mark would in effect deny protection to the senior mark.

Lloyd Schuhfabrik Meyer v Klijsen Handel BV, ECJ

Similarity of TM The Court explained what it meant by 'the distinctive components' of a mark. The national court, it said, must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered, taking particular account of the mark's inherent characteristics, whether or not it contains a descriptive element, the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking, and statements from chambers of commerce and industry or other trade and professional associations

Canon KK v Metro-Goldwyn-Mayer Inc

Similarity of goods and global appreciation test. All relevant factors must be taken into account, including the nature of the goods, the end users, the method of use and whether the goods are in competition with each other or are complementary. A lesser degree of similarity between the goods and services could be offset by a greater degree of similarity between the marks and vice versa.

recital 11 of the TM Directive

Similarity of marks (11) The protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. *The protection should apply also in the case of similarity between the mark and the sign and the goods or services. It is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. The ways in which likelihood of confusion may be established, and in particular the onus of proof, should be a matter for national procedural rules which should not be prejudiced by this Directive.*

Sabel BV v Puma AG, ECJ

Similarity of marks Similarity depends on an aural, visual and conceptual comparison based on the overall impression given by the marks, bearing in mind their distinctive components. The perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details'. The Court's advice on how

Inter-Ikea Systems BV v OHIM (IKEA/IDEA)

Similarity of marks it was said that the average consumer here would be very attentive as furniture (the goods in question) would only be bought after a period of reflection. When comparing the marks visually, the Court noted that the junior mark had a very dominant figurative element, while the senior mark consisted of just a single word. There was only a low degree of aural similarity because even though the sequence of vowel sounds were the same, the consonants 'd' and 'k' were spoken very differently, using different parts of the mouth. Last, there was no conceptual similarity, since the word 'idea' was a word generally understood by the European public while 'ikea' was a neologism with no obvious meaning and therefore no associations.

Shield Mark BV v Joost Kist, ECJ

Such messages need not be visual and so could appeal to the sense of hearing, smell, taste or touch.

Emanuel v Continental Shelf, ECJ

Using the name of the designer who ceased co-operation with the owner of TM 2. A trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark may not, by reason of that particular feature alone, be refused registration and the trade mark may not be liable to revocation on the ground that it would deceive the public, within the meaning of Articles 3(1)(g) and 12(2)(b) of Directive 89/104 to approximate the laws of the Member States relating to trade marks, in particular where the goodwill associated with that trade mark, previously registered in a different graphic form, has been assigned together with the business making the goods to which the mark relates.* The circumstances for refusing registration and the conditions for revocation envisaged by the abovementioned provisions presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived. In the case of a trade mark corresponding to the name of a person, even if the average consumer might be influenced in his act of purchasing a garment bearing the trade mark by imagining that the person in question was involved in the design of that garment, *the characteristics and the qualities of that garment remain guaranteed by the undertaking which owns the trade mark.*