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July 31, 2019
In 2007, the Swedish company Norrtelje Brenneri Aktiebolag registered the following sign in Class 33 covering “alcoholic drinks” as a Swedish trade mark:
The registration was accompanied by a disclaimer stating that, “registration does not give an exclusive right over the word RoslagsPunsch”. The disclaimer was required by the Swedish Patent and Registration Office as a condition of registration, as “Roslags” is a region of Sweden and “Punsch” describes one of the alcoholic drinks covered by the registration.
In December 2015, the defendant, Mats Hansson applied to register the word sign ROSLAGSÖL as a Swedish trade mark for goods in Class 32 covering “non-alcoholic beverages and beers”. The PRO rejected the application due to the likelihood of confusion with the earlier mark.
Mr Hansson appealed to the Swedish Patents and Market Court, arguing that there was no likelihood of confusion. The Swedish court agreed and approved the registration of his sign as a trade mark.
This time, the PRO appealed to the Patents and Market Court of Appeal, which asked the CJEU whether Article 4(1)(b) of the Trade Mark Directive (2008/95/EC) (which covers likelihood of confusion where there is identity or similarity between the signs and identity or similarity between the goods or services concerned) precluded national legislation from providing for a disclaimer, the effect of which would be to exclude an element of a complex trade mark from the analysis of a likelihood of confusion, or to attribute limited importance to such an element, in advance and permanently.
The CJEU noted first that the primary function of a trade mark is as an indicator of origin. Further, it said, there is nothing in the Directive that obliges a Member State to introduce, or prohibits it from introducing, a provision stating that a trade mark registration can be accompanied by a disclaimer. Equally, there is nothing in the Directive specifying the effects of such a disclaimer on the examination of likelihood of confusion.
Therefore, in principle, Member States are free to provide that disclaimers can be recorded at the time of registration, whether voluntarily by the applicant or at the request of the national trade mark office, provided they do not impair the effectiveness of the Directive, in particular the protection given to owners of earlier trade marks against the registration of marks liable to create a likelihood of confusion.
In addition, the CJEU said, such disclaimers must not call into question the harmonisation of trade mark law across Member States.
In this case, the Swedish court had set out three possible effects of a disclaimer on the analysis of likelihood of confusion: (i) the subject of the disclaimer is excluded from the analysis; (ii) the subject of the disclaimer is taken into account, but its importance is limited; and (iii) account is taken of the subject of the disclaimer in accordance with CJEU case law.
Likelihood of confusion
The CJEU noted that an examination of likelihood of confusion involves a global assessment of various factors, including the distinctiveness of the earlier trade mark, which determines the extent of protection; the more distinctive the earlier mark, the greater the likelihood of confusion will be.
Further, it said, a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, in particular a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the trade marks, and vice versa.
Similarly, the fact that a trade mark is of weak distinctiveness does not exclude a likelihood of confusion, in particular where the signs and the goods or services covered are similar.
The global assessment must be based on the overall impression created by the visual, phonetic or conceptual similarity between the marks. The perception of the marks by the average consumer plays a decisive role and the average consumer normally perceives a mark as a whole and does not analyse its various details.
Exclusion of descriptive element
Given the requirements of a global assessment, the CJEU said that a disclaimer whose effect is to exclude an element of a complex trade mark from an analysis of likelihood of confusion due to that element being descriptive or not distinctive, would not be compatible with the requirements of Article 4(1)(b). Such an exclusion could lead to an incorrect assessment, both of the similarity between the signs and of the distinctiveness of the earlier trade mark, which would lead to a distorted global assessment of the likelihood of confusion.
Assessing the similarity of the signs cannot, the CJEU said, be confined to taking one sole component of a complex trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole. Therefore, each component of the sign must be analysed and given its relative weight in order to determine the overall impression made; descriptive elements cannot be excluded.
In any event, an assessment of the earlier trade mark’s distinctiveness depends on the inherent characteristics of the mark, including the presence or absence of descriptive elements.
Further, the power of a trade mark to identify origin has to be assessed by looking at the sign as a whole, in the light of all its components; excluding any one of its elements could have an effect on the extent of protection.
Giving limited weight to descriptive element
The CJEU also said that a disclaimer whose effect is to attribute a lack of distinctiveness to a certain element of a complex trade mark, such that the element has only limited importance in the analysis of likelihood of confusion, would also be incompatible with the requirements of Article 4(1)(b).
First, any descriptive, non-distinctive or weakly distinctive elements of a complex trade mark, whether or not mentioned in a disclaimer, generally carry less weight in the analysis of similarity between the signs than any elements of greater distinctiveness, which are also more able to dominate the overall impression created by the mark. However, determining overall impression is not subject to general presumptions and depends on the particular circumstances of each case.
Secondly, although it is true that where the earlier trade mark and the subsequent sign only coincide in an element that is weakly distinctive or descriptive the court is unlikely to find a likelihood of confusion, such likelihood cannot be ruled out in any event. Attributing limited weight to a non-distinctive element of a complex trade mark described in a disclaimer might well correspond to the relevant public’s perception of the signs in question, but it will not necessarily be so in every case and could lead to the registration of signs liable to produce a likelihood of confusion.
Thirdly, the CJEU said the need to take into account the disclaimed element is not called into question by the fact that it is, under national law and because of its descriptive character, excluded from registered trade mark protection; a finding of a likelihood of confusion would not lead to it being protected. Further, the Directive has sufficient guarantees to ensure that signs consisting exclusively of descriptive signs or indications are not registered or are declared invalid.
In addition, under the Directive, where a mark is validly registered, the exclusive right conferred does not allow its proprietor to prohibit a third party from using descriptive indications for the goods and services concerned, subject to compliance with certain conditions.
Given the above, the CJEU held that Article 4(1)(b) should be interpreted as precluding national legislation from making provisions for a disclaimer whose effect would be to exclude an element of a complex trade mark from the global analysis of likelihood of confusion, or to attribute limited importance in that analysis to such an element, in advance and permanently. (Case C-705/17 Patent- och registreringsverket v Mats Hansson EU:C:2019:481 (12 June 2019) — to access the judgment in full, go to the curia search form, type in the case number and follow the link).