What is an 'identical' trade mark?

United Kingdom

The European Court of Justice has recently clarified what constitutes an "identical" trade mark for the purposes of the Trade Marks Directive (89/104/EEC).

The owner of a trade mark for the word "ARTHUR" (registered as a handwritten word) had brought proceedings in France for trade mark infringement against the owner of the mark "ARTHUR ET FELICIE". The French Court referred to the ECJ the question of whether the two marks were identical.

The defendants argued that the two marks were not identical, and that the concept of identity should be interpreted strictly. The UK Government and the European Commission supported this argument, on the basis that it would be undesirable to extend too far the absolute protection granted by the Directive to trade marks infringed by the use of an "identical" mark in relation to identical goods or services. Under section 5(1)(a) of the Directive, and the corresponding section 10(1) of the UK Trade Marks Act 1994, there is no requirement to prove a likelihood of confusion where the trade marks (and the goods or services for which they are used) are identical.

The ECJ held that a strict interpretation was appropriate. It held that two trade marks are identical where one mark reproduces all the elements of the other without any modification or addition, or where the differences between the two are so insignificant that they may go unnoticed by an average consumer. Such a consumer would be reasonably well informed, observant and circumspect but would only rarely have the chance to directly compare two marks so would rely on an imperfect memory. Moreover, his or her attention levels may vary depending on the category of the goods or services in question.

Clarification of this issue is welcome in the UK, where previous case law had been somewhat inconsistent, however there is likely to be continued legal argument in individual cases as to what is "insignificant" in the eyes of the average consumer.

For further information or a copy of the decision please contact Stephen Whybrow on +44 207 367 2175) or by e-mail at [email protected] or Lucy Kilshaw on +44 207 367 2044 or by e-mail at [email protected] or Victoria Baker on +44 207 367 3451 or by e-mail at [email protected]