Introduction by Andrew Berger
I am pleased to introduce Robert Cumming who I have enjoyed meeting at INTA and whose blog posts at.www.robertcumming.eu I read with interest.
Robert is an experienced IP lawyer with Appleyard Lees, a 32-person firm of European patent and trade mark attorneys. With a litigation background and qualifications as an English solicitor, Registered UK and European trade mark attorney and Trade Mark Litigator, Robert is just as happy advising on contentious matters as prosecution, strategy and licensing. He has written and presented on keyword advertising and is working with INTA on a global report analysing the use of survey evidence in trade mark litigation. He tweets as @robertcumming and his email is Robert.Cumming@appleyardlees.com.
Initial interest confusion is of interest to practitioners on both sides of the Atlantic. If as a result of that confusion no one buys the defendant’s product thinking it belongs to the plaintiff, is there still liability? The answer in the US is yes as the Steinway case in the Second Circuit recognized a number of years ago. But what about in the EU? Do the same rules apply? Take a look at Robert’s piece below for some answers.
Blog Post by Robert Cumming
Initial interest confusion is a concept in trade marks law which allows for a finding of liability where a brand owner can demonstrate that a consumer was confused by a defendant’s sign at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase.
The position in the European Union was considered in detail by Mr Justice Arnold in Och-Ziff Management Europe Ltd and Anor v OCH Capital LLP & Others EWHC 2599 (Ch) (my iPit post here).
The most frequently used illustration of the concept relates to a roadside branding which relies on a deception which is later corrected but only at the point where the consumer has invested enough time in pursuing the “bait” that he finds it easier to simply purchase from the deceiver rather than travel to the true brand owner.
The case of, BP Amoco plc v John Kelly Ltd  FSR 5, involves petrol stations rather than video stores and relates to UK trade marks registration numbers 1469512 and 1469513 (shown below). It illustrates the issue well:
BP was the proprietor of a registered trade mark for the colour green as applied to the exterior surface of the premises used for the sale of the goods, which was registered for goods which included lubricants and fuels in Class 4. The first defendant adopted a petrol station design which featured the colour green. The Court of Appeal of Northern Ireland upheld the claim for trade mark infringement.
…[W]hen a motorist travelling at speed sees a green station, at a distance at which the logo cannot be made out, and starts to make preparations to turn off into the station, he is liable to continue his manoeuvre even though he may descry the logo as he nears the station and appreciate that the petrol on sale is that of the respondents and not of BP. As he put it, the antidote to the bane has not been applied and that is a customer lost. We consider that there is force in this contention
The use of an identical mark in relation to identical goods or services in the European Union does not require a likelihood of confusion. However, the guidance from the Court of Justice of the European Union makes clear that there must be an adverse effect on one of the functions of the trade mark (see in particular Case C-487/07 L’Oréal SA v Bellure NV  ECR I-5185).
However, where the marks are not identical, can there be infringement where there is no confusionat at the point of sale as to origin?
Article 5(3)(d) of the Harmonisation Directive 2008/95/EC states that the use of the sign on business papers and in advertising may constitute trade mark infringement.
Furthermore, the CJEU stated in Interflora (my iPit post here) and Die Bergspechte (iPit post here) that the use in advertising of a sign similar to a registered trade mark relating to similar goods or services is sufficient for there to be infringement. These cases are supported by the rationale that only a likelihood of confusion is required and not actual confusion and follow the reasoning in Google France (iPit post here) and Portakabin (iPit post here) that:
where a third party’s ad suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on the function of indicating origin.
The likelihood of confusion must be assessed at the moment when the advertisement is viewed, whether or not it leads to a sale and whether or not there is any confusion at the time of the sale. This is because although there may be no diversion of sales, the confusing advertisement may:
- Affect the reputation of the mark
- Erode the distinctiveness of the mark
In short, no sale is required in order to infringe.