An appeal to the Supreme Court should not be considered a third instance ruling, by which the court is empowered to revise the facts in proceedings, but a final-resort channel through which only legal issues can be revised – that is, the application of the law to facts which have already been established by a trial court. The Supreme Court's ultimate goal is to create and unify jurisprudence on issues in need of interpretation. For this reason, analysis of the likelihood of confusion in a Supreme Court appeal is often precluded, as it is considered a question of fact.

However, in a judgment handed down on January 20 2013, a Supreme Court judge issued an interesting dissenting opinion in this regard.

The appeal related to the potential infringement of Article 9.1.b of the EU Community Trademark Regulation, which grants a rights holder the right to prohibit the use of other signs that may cause confusion with its own trademark. Specifically, the appellant argued that the court of second instance's conclusion on lack of likelihood of confusion between its mark and the disputed sign was erroneous. According to the appellant, the court had departed from case law, which establishes that likelihood of confusion analysis should consist of an overall assessment of all relevant factors.

In its judgment, the Supreme Court asserted that the role of a Supreme Court appeal is to ascertain the correct application of the substantive law to the facts of the case. Risk of confusion can be revised on appeal only if the criteria examined in determining the existence of confusion were not applied or were applied incorrectly. The Supreme Court thus admitted that the determination of the existence or non-existence of likelihood of confusion is an issue of law and, as such, is revisable on appeal to the Supreme Court – but only under certain circumstances.

In the case at hand, the Supreme Court dismissed the appeal on the grounds that the appellant had raised a question of fact before the trial court, which, in properly evaluating the relevant factors in order to establish likelihood of confusion, had ruled that the graphic and visual differences between the signs were significant enough to prevent confusion.

Contrary to the majority of the chamber, Judge Sancho Gargallo disagreed with this opinion. He asserted that the assessment of confusion is a value judgement which may be revised on appeal to the Supreme Court if it has not been adjusted to the guidelines set by the European Court of Justice (ECJ) and the Supreme Court itself.

On considering the jurisprudential guidelines for assessing likelihood of confusion, the judge opined that the appealed judgment had neglected these interpretive guidelines. He proceeded to a new analysis of likelihood of confusion. According to the judge, the trial court had disregarded the high degree of similarity between the goods and had overestimated the fact that the signs differed in their third letter and in some graphic elements; in his view, a likelihood of confusion should have been found. Therefore, in his opinion, the Supreme Court should have upheld the appeal for infringement of Article 9.1.b of the Community Trademark Regulation as it was interpreted by the ECJ.

This dissenting vote reflects the vague distinction between what is considered a question of fact – which cannot be appealed before the Supreme Court, except in cases of manifest error – and a value judgement, which may be revised by the Supreme Court.

While assessing likelihood of confusion has been traditionally regarded as a matter of fact, not revisable on appeal to the Supreme Court, if the interpretation given in this dissenting vote opinion is taken to the extreme, it would imply that, in practice, a Supreme Court appeal is closer to a third instance ruling, in which it is possible to revise the assessment of likelihood of confusion based on value judgements, which are often difficult to separate from the facts.

For further information on this topic please contact Carlota Viola at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email (

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