9. Likelihood of Confusion: Legislative Harmonisation?

This analysis is conducted applying the legal dogmatic method as it was set out in Chap. 2. See Chap. 2, Sect. 2.​2.

The understanding of de lege lata and what is understood as “valid law” is discussed in Chap. 2, Sects. 2.​1 and 2.​2.​1.

See Chap. 2, Sect. 2.​3.

On the understanding of “floor and ceiling,” see Chap. 4, Sect. 4.​2.​1.

On the distinction between “rule” and “standard,” see Chap. 5, Sect. 5.​2.

I.e., art. 10^bis(3)(1) of the Paris Convention.

It should be mentioned though that the likelihood of confusion standard in art. 16(1) of the TRIPS Agreement was included in the draft agreement of July 23 1990. See Gervais, Daniel, ‘The TRIPS Agreement: Drafting History and Analysis’, (4th edn, Sweet & Maxwell, 2012), p. 326 setting out this draft of the provision in its entirety.

Recital 41 of the TM Directive.

The similar recital 13 of the TM Directive 2008.

Recital 43 of the TM Directive. See also on this Chap. 3, Sect. 3.​2.

Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, (opinion of AG Jacobs), paras 53-54.

Marca Mode v. Adidas, Case C-425/98, [2000] ECR I-4861, (opinion of AG Jacobs), para 36, including footnotes 26 and 28 of the opinion where Jacobs referred to paras 53-54 respectively of his opinion in Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, (opinion of AG Jacobs).

See Chap. 4, Sect. 4.​3.​5.

Italics added. Art. 6^bis of the Paris Convention, as per the wording of art. 6^bis(2), only applied to goods. However, art. 16(2) of the TRIPS Agreement has extended art. 6bis of the Paris Convention to services.

See overall Ricketson discussing the meaning of “liable to create confusion” in connection with the “likelihood of confusion.” Ricketson, Sam, ‘The Paris Convention for the Protection of Industrial Property: A Commentary’, (1st edn, Oxford University Press, 2015), p. 553-558. Art. 16(1) of the TRIPS Agreement extended the protection under art. 6^bis of the Paris Convention to service marks.

Ricketson, Sam, ‘The Paris Convention for the Protection of Industrial Property: A Commentary’, (1st edn, Oxford University Press, 2015), p. 554.

The Court of Justice though has applied the provision to determine what is understood by “well known” mark under art. 8(2)(c) of the TM Regulation and art. 5(2)(d) of the TM Directive and how “well known” is understood vis-à-vis marks with a reputation. For instance, in General Motors v. Yplon the Court of Justice preliminarily ruled on the meaning of “has a reputation” vis-à-vis the understanding of “well known” under art. 6^bis of the Paris Convention. General Motors v. Yplon, Case C-375/97, [1999] ECR I-5421, paras 19-28See also more explicitly Advocate General Jacobs’ preceding opinion, General Motors v. Yplon, Case C-375/97, [1999] ECR I-5421, (opinion of AG Jacobs), paras 30-44. After analysing the relevant provision of the Paris Convention and the TRIPs Agreement, Jacobs concluded that “the protection of well-known marks under the Paris Convention and TRIPs is accordingly an exceptional type of protection afforded even to unregistered marks. It would not be surprising therefore, if the requirement of being well-known imposed a relatively high standard for a mark to benefit from such exceptional protection. There is no such consideration in the case of marks with a reputation. Indeed, as I shall suggest later, there is no need to impose such a high standard to satisfy the requirement of marks with a reputation in Article 5(2) of the Directive.” Ibid, para 33. Jacobs reiterated this point in his opinion in Davidoff v. Gofkid. See Davidoff v. Gofkid, Case C-292/00, [2003] ECR I-00389, (opinion of AG Jacobs), para 4, including footnote 4 of the opinion. See further on the well-known trademarks, Mellor, James, David Llewelyn, Moody-Stuart, Thomas, et al, ‘Kerly’s Law of Trade Marks and Trade Names’, (16th edn, Sweet & Maxwell, 2018), p. 619-622 and Mühlendahl, Alexander von, Dimitris Botis, Spyros M. Maniatis, et al, ‘Trade Mark Law in Europe: A Practical Jurisprudence’, (3rd edn, Oxford University Press, 2016), p. 550-560. For a pre Sabel aspect, see Kur, Annette, ‘Well-Known Marks, Highly Renowned Marks and Marks Having a (High) Reputation – What’s It All About’, IIC, vol. 23/no. 2, (1992), pp. 28.

See Bodenhausen, Georg, ‘Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967’, (1st edn, World Intellectual Property Organization, 1968), p. 89.

WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20 to 29 1999. All countries relevant to this book were represented as parties to the process of making the recommendations, cf. annex II of the 1999 WIPO Joint Recommendations.

Cf. art. 2(1)(b)(1) of the 1999 WIPO Joint Recommendations.

Cf. art. 2(2)(a)(i)-(iii) of the 1999 WIPO Joint Recommendations. The provision continues: “(b) Where a mark is determined to be well known in at least one relevant sector of the public in a Member State, the mark shall be considered by the Member State to be a well-known mark. (c) Where a mark is determined to be known in at least one relevant sector of the public in a Member State, the mark may be considered by the Member State to be a well-known mark. (d) A Member State may determine that a mark is a well-known mark, even if the mark is not well known or, if the Member States applies subparagraph (c), known, in any relevant sector of the public of the Member State.”

Nieto Nuño v. Monlleó Franquet, Case C-328/06, [2007] ECR I-10093, (opinion of AG Mengozzi), paras 6-7. After in those paragraphs setting out the recommendations on inter alia the “relevant sector of the public,” Mengozzi seemed subsequently to use the recommendations implicitly in the understanding of “part of the public.” Ibid, para 46. The recommendations have also been referred to by Advocate General Jacobs in Adidas-Salomon and Adidas Benelux v. Fitnessworld, Case C-408/01, [2003] ECR I-12537, (opinion of AG Jacobs), para 39, including footnote 18 of the opinion and by Advocate General Jääskinen in Interflora v. Marks & Spencer, Case C-323/09, [2011] ECR I-8625 (opinion of AG Jääskinen), para 129. See also the use of the recommendations by the General Court in J-M.-E.V. e hijos v. EUIPO, Case T-2/17, [2018], paras 65-71.

For a discussion on the definition of unfair competition under the Paris Convention, see Ricketson, Sam, ‘The Paris Convention for the Protection of Industrial Property: A Commentary’, (1st edn, Oxford University Press, 2015), p. 694-696.

Italics added.

See Chap. 7, Sect. 7.​3.

Bodenhausen, Georg, ‘Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967’, (1st edn, World Intellectual Property Organization, 1968), p. 144.

The full reference is Council Directive of 10 September 1984 relating to the approximation of the laws, regulations and administrative provisions of the Member States concerning misleading advertising, [1984] OJ L250/17. The directive was later amended by the UCPD. See Reich, Norbert, Micklitz, Hans-W., and Rott, Peter, ‘European Consumer Law’, (2nd edn, Intersentia, 2014), p. 72 and similarly Micklitz, Hans-W., ‘Unfair Commercial Practices and Misleading Advertising’, in Micklitz, Hans-W, Reich, Norbert and Rott, Peter eds., Understanding EU Consumer Law (1st edn, Intersentia, 2009), 61, p. 64.

Reich, Norbert, Micklitz, Hans-W., and Rott, Peter, ‘European Consumer Law’, (2nd edn, Intersentia, 2014), p. 75 and Micklitz, Hans-W., ‘Unfair Commercial Practices and Misleading Advertising’, in Micklitz, Hans-W, Reich, Norbert and Rott, Peter eds., Understanding EU Consumer Law (1st edn, Intersentia, 2009), 61, p. 69. See also Djurovic, European Law on Unfair Commercial Practices and Contract Law, 2016, p. 74.

Seville, Catherine, ‘EU Intellectual Property Law and Policy’, (2nd edn, Edward Elgar, 2016), p. 267.

Anheuser-Busch v. Budvar, (Grand Chamber) Case C-245/02, [2004] ECR I-10989, para 4.

Italics added. The TM Directive refers directly to the conformity with art. 16(1) of the TRIPS Agreement, but not to the part of the provision on likelihood of confusion, but on priority. See recital 17 of the TM Directive.

Skrzydło-Tefelska, Ewa, and Żuk, Mateusz, ‘Article 9: Rights Conferred by a Community Trade Mark’, in Hasselblatt, Gordian N. ed., Community Trade Mark Regulation (EC) no 207/2009: A Commentary (1st edn, Beck/Hart, 2015), 295, p. 298.

Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 268.

Ricketson has referred to art. 10^bis of the convention as an aid for interpreting the term “confusion” in art. 16(1) of the TRIPS Agreement. Ricketson, Sam, ‘The Paris Convention for the Protection of Industrial Property: A Commentary’, (1st edn, Oxford University Press, 2015), p. 651. See also Correa, Carlos M., ‘Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement’, (1st edn, Oxford University Press, 2007), p. 186-187.

Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, (opinion of AG Jacobs), para 54.

Italics added.

Dratler, Jay, and McJohn, Stephen M., ‘Intellectual Property Law: Commercial, Creative and Industrial Property: Volume One’, (, Law Journal Press, 2016), p. 1A-75. See also Correa, Carlos M., ‘Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement’, (1st edn, Oxford University Press, 2007), p. 186, footnote 56 with a reference to Dratler.

Malbon, Justin, Lawson, Charles and Davison, Mark, ‘The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights: A Commentary’, (1st edn, Edward Elgar, 2014), p. 298.

Correa, Carlos M., ‘Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement’, (1st edn, Oxford University Press, 2007), p. 187.

See right below Sect. 9.3.1 dealing with the EU standard.

Gervais, Daniel, ‘The TRIPS Agreement: Drafting History and Analysis’, (4th edn, Sweet & Maxwell, 2012), p. 330.

For the earlier mentioning of these potential linguistic differences as part of implementing EU directives, see Chap. 2, Sect. 2.​3.​1 and on harmonisation Chap. 4, Sect. 4.​2.​1.

See Chap. 1, Sect. 1.​3.​1.

Ditto in the TM Regulation 2009 and TM Regulation 1994.

Cf. art. 4(1)(b) of the TM Directive 2008 and TM Directive 1989.

Cf. art. 9(1)(b) of the TM Regulation 2009 and TM Regulation TM Regulation 1994.

Cf. art. 5(1)(b) of the TM Directive 2008 and TM Directive 1989.

Accounting for the fact that the TM Regulation relates to protecting “EU trademarks,” the changes of both the TM Regulation and TM Directive are the same. The changes are stipulated in the proposal for a new trademark directive with → and ← indicating the new insertions: “Article 510 Rights conferred by a trade mark 1. The registered → registration of a ← trade mark shall confer on the proprietor exclusive rights therein.

(b) any → the ← sign where, because of its identity → is identical ← with, or similarity to, the trade mark and the identity or similarity of the → is used for ← goods or services covered by → which are identical with or similar to the goods or services for which ← the trade mark → is registered ← and the sign, → if ← there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.” EP and Council Proposal for a Directive to approximate the laws of the Member States relating to trade marks of 27 March 2013, COM(2013) 162 final 2013/89 (COD), p. 18-19.

It emerges in art. 9(3)(a)-(f): “3.The following, in particular, may be prohibited under paragraph 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods or putting them on the market, or stocking them for those purposes, under the sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign as a trade or company name or part of a trade or company name; (e) using the sign on business papers and in advertising; (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC.”

Cf. art. 9(1) of the TM Regulation and art. 10(1) of the TM Directive.

Cf. art. 9(2) of the TM Regulation and art. 10(2) of the TM Directive.

Cf. art. 9(2)(b) of the TM Regulation and art. 10(2)(b) of the TM Directive.

Cf. art. 4 of the TM Regulation and art. 3 of the TM Directive. Hence, art. 4 of the TM Regulation states that “[a]n EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” In substance, the wording of art. 3 of the TM Directive is identical, although the TM Directive does not refer to “EU trade mark” but “trade mark” and “register” instead of “the Register of European Union trade marks.”

See above Chap. 3, Sect. 3.​2.​2.​1, in particular footnote 39.

That is, the removal of this requirement from art. 4 of the TM Regulation 2009 and TM Regulation 1994 and art. 2 of the TM Directive 2008 and TM Directive 1989. On registration of those and other unconventional marks, see Schovsbo, Jens, Rosenmeier, Morten and Petersen, Clement Salung, ‘Immaterialret: Ophavsret, Patentret, Brugsmodelret, Designret, Varemærkeret’, (5th edn, Jurist- og Økonomforbundets Forlag, 2018), p. 470-474 and Lunell, Erika, ‘Okonventionella Varumärken : Form, Färg, Doft, Ljud’, (1st edn, Stockholm, 2007).

Hence, Danny Friedmann has argued that “[t]he reform of the trade mark system, by removing the graphical representation requirement, will bring the registration of non-traditional trade marks back to life, beginning with sound marks. Assessing the available paths of registration, which are linked to the advances of scent-emitting technology, it becomes clear that scent marks inevitably will make their comeback in the EU.” This is with the caveat though, that an agreement can be reached on how to classify smells. See Friedmann, Danny, ‘EU opens door for sound marks: will scent marks follow?’, Journal of Intellectual Property Law & Practice, vol. 10/no. 12, (2015), pp. 931, p. 934 and the article at large for an analysis of the effect that the legislative change has on the ability to register smell marks.

Instead, the requirement of representation now appears in art. 4(b) of the TM Regulation and art. 3(b) of the TM Directive. The provision is set out above in footnote 59.

Italics added. The recital continues: “Use of the sign for purposes other than for distinguishing goods or services should be subject to the provisions of national law.”

For instance, in Céline SARL v. Céline SA, the Court of Justice (Grand Chamber) stated that “there is use ‘in relation to goods’ within the meaning of Article 5(1) of the directive [art. 10(2) of the TM Directive] where a third party affixes the sign constituting his company name, trade name or shop name to the goods which he markets (see, to that effect, [Arsenal Football Club v. Reed, Case C-206/01, [2002] ECR I-10273], paragraph 41, and [Adam Opel v. Autec, Case C-48/05, [2007] ECR I-1017], paragraph 20). (…) In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party.” Céline SARL v. Céline SA, Case C-17/06, [2007] ECR I-7041, paras 22-23. See also Blomqvist v. Rolex, Case C-98/13, [2014], para 27 and Daimler v. Együd Garage, Case C-179/15, [2016], para 26, including the case law cited in both decisions. In Mitsubishi v. Duma Forklifts, the Court of Justice has recently significantly expanded “use” to include the debranding of goods not previously marketed in the EEA before placing the goods in circulation in the EEA. Mitsubishi v. Duma Forklifts, Case C-129/17, [2018], paras 42-49. See also further Skrzydło-Tefelska, Ewa, and Żuk, Mateusz, ‘Article 9: Rights Conferred by a Community Trade Mark’, in Hasselblatt, Gordian N. ed., Community Trade Mark Regulation (EC) no 207/2009: A Commentary (1st edn, Beck/Hart, 2015), 295, p. 309-310 and p. 362-365 and Bøggild, Frank, and Staunstrup, Kolja, ‘EU-Varemærkeret’, (1st edn, Karnov Group, 2015), p. 360-373.

The understanding of “identical” taken within the “double identity” issues is addressed in the introduction Chap. 1, Sect. 1.​5.​1, in particular footnote 110.

As for infringement of senior marks with “a reputation,” see art. 9(2)(c) of the TM Regulation (art. 9(1)(c) of the TM Regulation 2009 and TM Regulation 1994) and art. 10(2)(c) of the TM Directive (art. 5(2) of the TM Directive 2008 and TM Directive 1989). As for registration, see the art. 8(5) of the TM Regulation (ditto of the TM Regulation 2009 and TM Regulation 1994) and art. 5(3)(a) of the TM Directive (art. 4(3) of the TM Directive 2008 and TM Directive 1989). See also Chap. 1, Sect. 1.​5.​1, in particular footnote 111.

See Chap. 1, Sect. 1.​1.

Fundação Calouste Gulbenkian v. OHIM, Case C-414/14 P, [2015], para 48. See also earlier OHIM v. riha WeserGold Getränke, Case C-558/12 P, [2014], para 41, Kaul v. OHIM, Case C-193/09 P, [2010] ECR I-2, para 43, Albert René v. OHIM, Case C-16/06 P, [2008] ECR I-10053, para 44, Alecansan v. OHIM, Case C-196/06 P, [2007], para 35, Ponte Finanziaria v. OHIM, Case C-234/06 P, [2007] ECR I-7333, para 48, Vedial v. OHIM, Case C-106/03 P, [2004] ECR I-9573, para 51 and Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer. Case C-39/97, [1998] ECR I-5507, para 22. Although the decisions relate to registration of trademarks, finding likelihood of confusion in infringement disputes also presupposes, as a minimum, a similarity between the mark/sign and the products. This emerges from the identically worded provisions on registration and infringement.

Recital 11 of the TM Directive and recital 8 of the TM Regulation 2009.

Art. 8(1)(a) of the TM Regulation (ditto in the TM Regulation 2009 and TM Regulation 1994) and art. 4(1)(a) of the TM Directive (ditto of the TM Directive 2008 and TM Directive 1989).

Ibid. See also Bøggild, Frank, and Staunstrup, Kolja, ‘EU-Varemærkeret’, (1st edn, Karnov Group, 2015), p. 358 and Mellor, James, David Llewelyn, Moody-Stuart, Thomas, et al, ‘Kerly’s Law of Trade Marks and Trade Names’, (16th edn, Sweet & Maxwell, 2018), p. 426 and 589.

Registration art. 8(1)(b) and infringement art. 3(1) of the TM Directive Proposal 1980.

EESC opinion on the proposal for a first Council Directive to approximate the laws of the Member States relating to trade marks and the proposal for a Council Regulation on Community trade marks of 30 November 1981, [1981] OJ C 310/22, p. 24 (italics added).

Looking up “association” in the Oxford University Press online English/English dictionary, it appears that “connection” and “link” are examples of synonyms to the word.

Cornish, William R., Llewelyn, David, and Alpin, Tanya, ‘Intellectual Property: Patents, Copyright, Trademarks and Allied Rights’, (8th edn, Sweet & Maxwell, 2013), p. 768.

Recital 11 of the TM Regulation and recital 16 of the TM Directive.

Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, para 26.

Ibid, para 18. See also Marca Mode v. Adidas, Case C-425/98, [2000] ECR I-4861, para 34 and recently in the appeal decision Moscow Confectionery Factory v. EUIPO, Case C-248/18 P, [2018], paras 18-22. For some recent texts on interpreting “association,” see Mühlendahl, Alexander von, Dimitris Botis, Spyros M. Maniatis, et al, ‘Trade Mark Law in Europe: A Practical Jurisprudence’, (3rd edn, Oxford University Press, 2016), p. 304-311 and Jaeger-Lenz, Andrea, ‘Article 8: Relative Grounds for Refusal’, in Hasselblatt, Gordian N. ed., Community Trade Mark Regulation (EC) no 207/2009: A Commentary (1st edn, Beck/Hart, 2015), 198, p. 212-213.

Along those lines, Maeyaert and Muyldermans have stated that “[t]he likelihood of must obviously be established in the mind of, or on part of the relevant public.” Maeyaert, Paul, and Muyldermans, Jeroen, ‘Likelihood of Confusion in Trademark Law: A Practical Guide Based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012’, Trademark Reporter, vol. 103/no. 5, (2013), pp. 1032, p. 1041.

Recital 11 of the TM Regulation and recital 16 of the TM Directive (italics added).

Commission Notice on the definition of relevant market for the purposes of Community competition law of 9 December 1997, [1997] OJ C372/03.

Recital 3 of the TM Directive. See also recital 39 of the TM Regulation.

See Chap. 3, Sect. 3.​2.​2.​1.

See Chap. 10.

The EESC TM Opinion 2013, p. 44. The aspect of consumer protection is addressed in Chap. 1, Sect. 1.​3.​3.

Cf. art. 45(1) of the TM Regulation and TM Directive.

Recital 31 of the TM Directive. This recital is not found in neither the TM Regulation nor the TM Regulation 2009.

See Chap. 10.

Recital 11 of the TM Regulation and recital 16 of the TM Directive (italics added).

See Chap. 3, Sect. 3.​3. It is only the UK, Sweden and Denmark that recently have implemented the TM Directive.

Dent, Chris, ‘Confusion in a Legal Regime Built on Deception: The Case of Trade Marks’, Queen Mary Journal of Intellectual Property, vol. 5/no. 1, (2015), pp. 2.

Dent, Chris, ‘Confusion in a Legal Regime Built on Deception: The Case of Trade Marks’, Queen Mary Journal of Intellectual Property, vol. 5/no. 1, (2015), pp. 2, p. 6.

Wadlow, Christopher, ‘The Law of Passing-Off Unfair Competition by Misrepresentation’, (5th edn, Sweet & Maxwell, 2016), p. 566-578. It is beyond the scope of this book to address the difference between passing off of marks and trademark infringement. Wadlow has addressed the differences in chapter 8 of his text, in particular pp. 631. See also Mellor, James, David Llewelyn, Moody-Stuart, Thomas, et al, ‘Kerly’s Law of Trade Marks and Trade Names’, (18th edn, Sweet & Maxwell, 2018), chapter 20, in particular p. 748 and p. 785-787. Dent has seen several reasons for introducing confusion into trademark law, some of which relate to the rising importance of the individual. The claims related to the rising importance of the individual are: “[i]the acceptance, in the law, of members of society as individuals with specific attributes; [ii] the acknowledgement of the ‘internal’ life of those individuals; and [iii] the understanding that individuals possess knowledge and that knowledge may be incorrect.” Dent, Chris, ‘Confusion in a Legal Regime Built on Deception: The Case of Trade Marks’, Queen Mary Journal of Intellectual Property, vol. 5/no. 1, (2015), pp. 2, p. 17 and expanded on in p. 17-26. Dent has offered three other reasons: “[i]the shift away from the ‘moral’ dimension of deception; [ii] the introduction of the trade mark registration system; [iii] and a breakdown in the rigidities that were a feature of the early nineteenth century.” Ibid, p. 8 and expanded on in p. 8-17.

Dent, Chris, ‘Confusion in a Legal Regime Built on Deception: The Case of Trade Marks’, Queen Mary Journal of Intellectual Property, vol. 5/no. 1, (2015), pp. 2, p. 23. This finding, is connected with the “quality function” of trade marks where customers see trademarks as not only a badge of origin but also a sign of quality. For this function to manifest itself requires “customers” “have the capacity to know quality when they see it” and that they “may be misguided as to the quality of a product based on their knowledge of a mark.” Ibid, p. 26. For a further elaboration on the quality function, see Chap. 1, Sect. 1.​3.​1.

Seixo v. Provezende, (1865-66) LR 1, Ch App 192, p. 196 (italics added). The quote from Seixo v. Provezende was provided by Arnold J in Enterprise v. Europcar, [2015] EWHC 17 (Ch), para 158.

The presentation, where the author of this book was present, can be found at: Arnold, Richard, presentation under the heading ‘The average consumer in passing off’ as part of a conference under the heading ‘The Average Consumer in Trade Mark Law and Passing Off’ held at UCL in London 25 February 2015, at 17:50: https://​www.​youtube.​com/​watch?​v=​zqTC_​-beZxk (last visited 26 May 2019), see from 18:25 onwards.

In registration: s. 11 and 12(1) and infringement: s. 4(1) (italics added).

White, T. A. Blanco, and Robin, Jacob, ‘Kerly’s Law of Trade Marks and Trade Names’, (10th edn, Sweet & Maxwell, 1972), p. 451 (italics added).

Recital 12 of the UK TM White Paper.

British Sugar v. Robertson, [1996] RPC 281, (EWHC), p. 285.

Cf. para 3.13 of the UK TM White Paper.

Art. 5 of the TM Directive 1989 as elaborated on by Jacob J.

Hence, it is stipulated in s 10(2)(a) of the UK TM Act 1994: “(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because – (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (…).”

In s 10(2)(b) of the UK TM Act 1994 it is stipulated: “(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.” The latter sentence stipulating the likelihood of confusion requirement applies equally to both s. 10(2)(a) and (b).

British Sugar v. Robertson, [1996] RPC 281, (EWHC), p. 291.

See the Trade Marks Regulations 2018, no. 825 and above in Chap. 3, Sect. 3.​3.​1.

See Chap. 2, Sects. 2.​3.​1, 2.​3.​1.​1, and 2.​3.​2.

See Chap. 3, Sect. 3.​3.​2.

In Danish: “i sin Helhed er saaledes eftergjort, at en Kjøber let faar det Indtryk, at Varen er forsynet med den rette Tilvirkers Stempel.” “Stempel” may be translated into English as “mark” or “stamp.” The Nordic TM Proposal 1882, p. 41.

Varemærkeloven, Act. No 52 of 17 April 1890.

In Danish: “en Andens (…) registrerede Varemærke vel ikke gengives uforandret, men Forandringerne ikke er af anden Beskaffenhed, end at Navnene eller Mærkerne i deres Helhed, uagtet Forskellen i Enkeltheder, let kunne forvexles.” § 13 of the DK TM Act 1890. This provision included both a reference to “mark” and “name.”

See § 4(5) of the DK TM Act 1890. On the preparatory comments on this provision, see the Nordic TM Proposal 1882, pp. 31 and p. 19-20.

Cf. art. 8(1)(b) and art. 9(2)(b) of the TM Regulation and art. 5(1)(b) and 10(2)(b) of the TM Directive of the Swedish and Danish versions.

Cf. art. 4(1)(b) and art. 5(1)(b) of the TM Directive 1989 in Norwegian.

The UCPD is part of the EEA Agreement, cf. art. 72 on consumer protection, cf. Annex XIX, para 7(g) of the EEA Agreement. The UCPD has been implemented into Norwegian law in the Norwegian Marketing Practices (Markedsføringsloven, Act No 2 of 9 January 2009, as most recently amended 1 July 2016). Although Norwegian is not an official language of the EU, the Norwegian legislature has made a Norwegian translation of the UCPD. This version is available at: https://​www.​regjeringen.​no/​no/​dokumenter/​Europaparlaments​%2D%2Dog-radsdirektiv-200529EF-direktiv-om-urimelig-handelspraksis%2D%2D-forelopig-norsk-oversettelse/​id500926/​ (last visited 26 May 2019).

Recital 18 of the UCPD. The translation in the Nordic languages is: Swedish: “genomsnittskonsumenten som är normalt informerad samt skäligen uppmärksam och upplyst,” Danish: “almindeligt oplyst, rimeligt opmærksom og velunderrettet gennemsnitsforbruger” and Norwegian: “gjennomsnittsforbrukeren, som er rimelig velinformert og rimelig observant og kritisk.”

E.g. SE TM Prop 2009/10:225, p. 121.

In Swedish: “inbegripet risken för att användningen av tecknet leder till uppfattningen att det finns ett samband mellan den som använder tecknet och innehavaren av varukännetecknet.”

See the SE TM Prop. 2018/18:267 on §10(2), ch. 1, p. 11 and § 8(2), ch. 2, p. 17 and above Chap. 3, Sects. 3.​3.​2 and 3.​3.​2.​1.

In Danish: “i det store og hele har fungeret tilfredsstillende, er det fundet rigtigt samtidig at gennemføre en modernisering af varemærkeloven, især med det formål at forenkle sagsbehandlingen.” Ibid, para 1. See Chap. 3, Sect. 3.​3.​2.​2.

The DK TM Bet. 199/1958, p. 107.

Forslag til varemærkelov, No 1990/2 LSF 83 of 10 June 1991.

The DK TM Prop. 1990/2, ad § 4(1). In Danish: “formelt en nydannelse.”

The DK TM Bet. 199/1958, p. 107.

In Danish: “i videst muligt omfang bevares med henblik på at reducere risikoen for fortolkningstvivl.” DK TM Prop. 261/2017-18, p. 24.

See the DK TM Prop. 261/2017-18 on § 4, sub-s 1(2), p. 28-31 and p. 55-56 and § 15, sub-s 1(2), p. 37-41 and p. 73. See also above in Chap. 3, Sects. 3.​3.​2 and 3.​3.​2.​2.

See the NO TM Prop. 98/2008-09, p. 5.

EAA Agreement, Annex VII, para 9(h) of 8 July 2016.

NO TM Prop. 98/2008-09, p. 42.

The fact as mentioned above that under registration i) the junior user’s sign is specified based on its application for registration, ii) there is no requirement of “use in the course of trade,” iii) and “in relation to goods and services.” See Chap. 10, Sect. 10.​2.​2.

As explained in NO TM Prop. 98/2008-09, the proposal essentially continues the previous law. NO TM Prop. 98/2008-09, p. 39.

See Chap. 4, Sect. 4.​3.​1.