Whether in an opposition prosecution before the French Industrial Property Institute or in the course of an action for infringement, the attack on a registered trademark is always estimated considering two points : the mark by itself and the goods/services that it designates.
In fact, according to Articles L.713-2 and L.713-3 of the Intellectual Property Code, are prohibited :
- the reproduction of a mark for identical goods or services ;
- the reproduction of a mark for similar goods or services if there is a likelihood of confusion in the mind of the public ; and
- the imitation of a mark for identical or similar goods or services if there is a likelihood of confusion in the mind of the public.
To appreciate the likelihood of confusion, one has to wonder whether a consumer who knows the prior mark and its goods, and who sees a product bearing the second mark, may attribute to the latter product the same origin as the products he knows.
Therefore the likelihood of confusion depends both on the likeness of the marks and on the similarity of the goods and services.
Consequently two identical marks may coexist in distinct fields. The case of the trademarks "Mont-Blanc" is often cited as an example : a first mark designates fountain pens and a second designates custards. There is no risk when seeing a custard to think that it is produced by the company manufacturing fountain pens.
In order to appreciate the similarity of the goods or services, one takes into account the fields more or less bound together with the consumer's mind (for example fragrances and jewels), of the complementarity of the goods (a dispenser of plastic sheets and the plastic sheets ; a software magazine and software products).
It can be noticed that for evaluating the similarity of goods and services, the international classes designated by the registration are not taken into account. In fact, goods belonging to the same class may not be similar ; for example, in class 9, there are both "spectacle cases" and "scales". In the same way, "glasses" belonging to class 21 are complementary and therefore similar with "drinks" of classes 32 and 33.
In order to compare the marks themselves, it is of constant jurisprudence to study the signs from the visual, phonetic and intellectual points of view.
From the visual point of view, ones evaluates the whole form of a figurative mark as well as the structure of the words (the number of syllables, the letters which are alike ...). For example, a consumer having an average attention who sees a product (spices) marked "SUPROC" may confuse it with the product that he knows : "DUCROC".
From the phonetic point of view, the marks can also be confused by a consumer who has not simultaneously both marks before his eyes. For instance, the sign "DANELYSE" can be read as the mark "DANIEL ELISE".
Finally, the signs can be confused from an intellectual point of view, having into his head the first mark, the consumer will associate the second one to it. This is what has been judged for the newspaper "Le lampadaire" (the lamp), which is the infringement of the newspaper "Le réverbère" (the street lamp). However, the sole intellectual similarity is not sufficient to establish a likelihood of confusion (Grand Mère (Grand-mother)/Mamie (Grand ma)).
The estimate of the likelihood of confusion is conducted almost in all cases, as only the identical reproduction of a mark for identical products is considered as infringing without having recourse to the notion of confusion. According to the ECJ, The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion (Llyod).
The likelihood of confusion is appreciated as a rule both on the basis of the mark and of the goods and services, the issue being always to know whether there is a risk to attribute the same origin to both marked products.
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