A “creative” approach to the probability of association. Is the GC trying to rewrite the laws?

The article was first published on the Kluwer Trademark blog

The 21st December 2021, the General Court (GC), in case T-369/20, dealt with the “risk of association” by setting out a double test which seems to contradict previous case law, in particular the historic judgment Sabel (C – 251/95).

The EUTM application”CEFA Certified European Financial Analyst” in classes 9 and 41 was opposed on the basis of previous registrations at the CFA, CFA INSTITUTE,

EUIPO upheld the opposition on the basis of the word mark CFA only, and the Fifth Board of Appeal (BOA) upheld it. According to the BOA, if the relevant public understood the letter “E” of the CEFA in the sense of European, there would be a risk that the consumer would associate the signs, considering that the mark applied for is a “European branch” of a group global or national entity “CFA” (paragraph 55 of the BOA decision).

On appeal before the General Court, inter alia, the applicant claimed that the findings of the BOA relating to a risk of association were based on erroneous assumptions unrelated to the reality of the market. According to the applicant, the companies never modify their marks by adding another letter to their usual marks or initials.

Curiously, the GC interpreted this to mean that the mark applied for did not possess any characteristic capable of creating an association between the sign applied for and “any series of earlier marks”, § 43. The Court then set out two cumulative conditions that must be met to establish a likelihood of confusion: 1) it must be established that there is a series of prior registrations; (2) the mark applied for must not only be similar to the marks belonging to the series, but also have characteristics likely to associate it with the series. Since these conditions were not noted in the BOA’s decision, it is annulled.

Not only is it unclear how the Court came to consider a “series of marks” argument, as there was no trace of it in the first and second instance decisions. More importantly, such vague language, and in particular the requirement that the probability of association requires “a series of earlier recordingsdoes not seem consistent with the notion of “association” which isnot an alternative to that of likelihood of confusion, but serves to define its scope(Sabel at §18). In other words, the risk of association does not depend on whether or not there is a “previous record series” but rather, as we all know, “on many elements and, in particular, on the recognition of the mark on the market, the association that can be made with the sign used or registered, the degree of similarity between the mark and the sign and between the goods or services identified(cf. Sabel §22), ie all factors relevant to the circumstances of the case.

Admittedly, where an opposition is based on a ‘series’ (or ‘family’) of marks, a likelihood of confusion may be created by the possibility of association between the mark applied for and the earlier marks forming part of the series, for example whenconsumer may be mistaken as to the provenance or origin of the goods or services covered by the mark applied for and may wrongly consider that the latter mark is part of this family or series of marks (at § 54, C‑317/10 P, UniCredito). Nevertheless, although the assessment of the likelihood of association in the case of a “series” of marks is based on different factual premises, confusion by association does not require a “series” but may very well exist regard to a single earlier mark.

Indeed, the likelihood of confusion includes not only the assumption that the consumer directly confuses the signs, but also the fact that the consumer establishes a link between the conflicting signs and presumes that the goods or services covered come from the same company or economically linked companies (this is so called “risk of indirect confusion”, cf. Sabel in §16) independently of the presence of a series of marks.

Thus begs the question: has the GC oversimplified or is it trying to create a new law?

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