Brands ECJ cases: Sabel BV v Puma AG - likelihood of confusion under the European Directive harmonising trade mark law across the Community

United Kingdom
Sabel BV v Puma AG

The ECJ clarified the meaning of "likelihood of confusion" for the purposes of infringement under the European Directive which harmonised trade mark law across Europe. In this case Puma had objected to a trade mark application made by Sabel in Germany on the grounds that the mark, which depicted a running cat, was similar to its own mark and was likely to confuse the public.

The issue to be decided was whether a mere likelihood of association which the public might make between the marks as a result of their resemblance was sufficient to satisfy the requirement for a likelihood of confusion, as has long been the practice under Benelux law. The ECJ followed the Advocate General's previous Opinion in the case and decided that a likelihood of association was not sufficient and could not be regarded as an alternative to a likelihood of confusion. The case confirms the view of the English Court on this question which was expressed in Wagamama v City Centre Restaurants in 1995 and will come as a relief to English lawyers for whom the Benelux approach is somewhat extreme!

The ECJ judgment also contains useful guidance on how to approach the question of likelihood of confusion when comparing two marks. It was stated that the likelihood of confusion must be based on the marks as a whole, taking into account their distinctive and dominant components. The more distinctive a mark the more confusion with a similar mark will be likely. However if a mark is not particularly distinctive because it is neither well known nor of imaginative content (as was the case here) the mere fact that the marks are similar is unlikely to give rise to confusion.