Sunday, March 7, 2010

Likelihood of Confusion & Association - An Insight to Fresh Slovak Trademark Law


As I previously reported yet in 2009, new Slovak trademark law have entered into the force on the 1st of January. According to explanatory report to new Trademark Act No. 506/2009, one of the embodied changes is the replacement of term ‘interchangeability’ by ‘similarity’. This was done by copying and pasting trademark directive (hereinafter as TM directive). As a consequence, it led to abandonment of the former concept of legal definitions in Article 3a.

[x] Article 3a of the ex-Trademark Act
(1) Signs or trademarks, which are identical or differ only in immaterial elements not changing overall character of a sign or trademark, shall be considered identical.
(2) Signs or trademarks shall be considered interchangeable and goods or services shall be considered similar if such interchangeability or similarity causes a likelihood of confusion with signs or trademarks or goods or services originated from different persons, or likelihood of association with a sign or trademark with earlier priority right on the part of the public.

[x] Pursuant to current Trademark Act the scope of proprietors rights (art. 8(2)(b)) [also relative refusal ground (art. 7)] has following wording :

No third party is entitled to use a sign in the course of trade without a consent of proprietor :
...
(b) if due to its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services, there exists a likelihood of confusion on the part of the public; likelihood of association between the sign and the trade mark is also considered likelihood of confusion. [is that a legal fiction ?]

Furthermore, explanatory report to the Trademark Act states that term ‘confusion’ includes also likelihood of association. [Huťko assumes that this will bring even more likelihood of confusion to the reading of the Act ;) ]

[x] On the other hand, Community law :

TM´s Directive (2008/95/ES, ex 89/104/ES) wording :
...; the likelihood of confusion includes the likelihood of association between the sign and the trade mark. [e.g. Czech Trademark Act No. 441/2003 does have same wording as directive in this provision]

This wording was exposed to lot of criticism for it´s unclarity and ambiguity in a last few years. TM directive got deserved when Court of Justice interpreted it´s meaning in Puma v. Sabel C-251/95, Canon v. Metro Goldwyn Mayer C-39/97, Lloyd C-342/97, Adidas v. Marca C-425/98 and Medion v. Thomson C-120/04. So called ‘likelihood of confusion which includes the likelihood of association’ notion was introduced (explained below).

The likelihood of association may arise in three sets of circumstances :
1) likelihood of direct confusion is when the public confuses the sign and the mark in question;
2) likelihood of indirect confusion or association is when the public makes a connection between the proprietors of the sign and those of the mark and confuses them;
3) likelihood of association in the strict sense is when the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused. (see paragraph 16 of Puma v. Sabel)

Whilst the 1) and 2) have been accepted as criterion of confusion, the 3) was rejected due to lack of any confusion. Hence, likelihood of association was rejected as an alternative criterion.

It seems to me that the highest court of Europe haven´t been heard thoroughly in Slovakia. The case law wasn´t taken into the account. Every Slovak court shall therefore interpret the national trademark law in the light of Community law as long as there was no room for "national creativity". Which I suppose wasn´t. Otherwise the result of verbatim application would be strikingly absurd.

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