The ECJ has, in the above case, lent support to the notion that there is a minimum threshold of similarity between marks that needs to be established before there is any need to consider the principal of interdependence as part of the likelihood of confusion assessment.
The appellant, Il Ponte Finanziaria SpA, held 11 trade marks registered in Italy in relation to goods in classes 18 and/or 25 all of which had the word component "bridge" in common. There were a mixture of figurative signs and word marks (e.g. "Bridge", "Old Bridge", The Bridge Basket", "Footbridge").
Il Ponte opposed an application to register the figurative mark "BAINBRIDGE" as a Community Trade Mark in classes 18 and 25. Both the Opposition division of OHIM and the Fourth Board of Appeal of OHIM rejected the opposition. They concluded that there was no likelihood of confusion due to the visual and aural dissimilarities between the marks. The dispute was appealed to the Court of First Instance. The CFI concluded that the conflicting marks did not display the minimum degree of similarity required for a likelihood of confusion to be possible, despite the distinctive character of the earlier marks or the fact that the goods covered by the earlier marks and those covered by the trade mark applied for were identical.
Before the ECJ the Il Ponte argued:
- That the CFI had acknowledged aural similarities between the marks
- That the aural similarity (being in the "bridge" part) prevailed over the visual / graphic differences.
- That the CFI erred in concluding that there was no likelihood of confusion on account of the visual and conceptual dissimilarities alone.
The goods and services are identical and the earlier marks are highly distinctive in character. Therefore the CFI should have compared the marks in issue on the basis of a full assessment applying the principle of interdependence.
The ECJ noted that the CFI had examined the overall impression created by the sign in issue, as regards any conceptual, visual and aural similarities. Here aural similarity was of less importance than visual similarity on account of the manner in which the goods were marketed; when making a purchase the relevant public usually perceived the mark designating these goods visually. Moreover, the finding that there was no conceptual or visual similarity was a finding of fact that could not be challenged by the ECJ.
Therefore the ECJ concluded that "in the absence of the minimum degree of similarity, the Court [CFI] cannot be criticised for having failed to apply the principle of interdependence in its overall assessment of the likelihood of confusion"
The ECJ explained that the principle of interdependence of the relevant factors means that where the similarity of marks and similarity of goods and services are being considered, a lesser degree of similarity between the marks may be offset by a higher degree of similarity between the designated goods and visa versa (ECJ, Lloyd Schuhfabrick Meyer v Klijsen Handel BV). The likelihood of confusion [required by Art 8(1)(b) of Council Regulation No 40/94/ 5(2)(b) and the Trade Marks Act 1994] presupposes however that both the mark applied for and the earlier mark are identical or similar and that the goods or services covered in the application are identical or similar- these conditions are cumulative (Case C-106/03 P Vedial v OHIM [2004).
In Vedial, the ECJ had confirmed the CFI’s conclusion that there was no likelihood of confusion in that case despite the reputation of the earlier mark and regardless of the identity of the goods because there was "no" similarity of marks. This was despite there being clearly some features in common between them (e.g. some similarity between the way the two marks would sound, and the same letters appearing in the same order etc.)
Mr Justice Lindsay in esure International Ltd v Direct Line Insurance noted that similarity was a relative concept but felt that Vedial indicated that there was a minimum threshold of similarity which had to be surmounted in order to establish similarity of marks for the purposes of the infringement and opposition provisions of the Regulation and the Directive, although Vedial did not say as much in direct terms. Being able to point to a few elements which could be called "similar" between the marks was not enough; see our hot topic of August 2007- "The wheels have come off".
However Il Ponte appears to be the first time that the ECJ has directly confirmed that there is a minimum threshold of similarity of marks as a prior condition to a finding of a likelihood of confusion.