LIKELIHOOD OF CONFUSION IN TRADEMARK LAW

BYMANJUL INDAULIYA B.Sc. LL.B. ROLL NO. - 984008

INTRODUCTION

The liability standards for trademark infringement are a mess. For most trademark suits, liability turns on the likelihood that an ordinary consumer will be confused. The likelihood of consumer confusion, in turn, depends on a multifactor test, the application of which varies from circuit to circuit. These multifactor tests are deeply flawed. It is time to take a closer look at the likelihood of confusion test with an eye to replacing it with a more sensible approach to trademark infringement.

STATING THE PROBLEM

The

first one deals with a study of the general concepts regarding the likelihood of consumer confusion between an earlier and a later mark. The second chapter is devoted to an in-depth exam of the standards for similarity of marks assessment as one of the factors for establishing a likelihood of confusion. Finally, the third chapter embarks on an assessment of the existing issues raised by the independently distinctive role which an earlier mark retains in a later mark.

THE LIKELIHOOD OF CONFUSION CONCEPT IN TRADEMARK LAW

Legislative framework and scope of application

Trade mark law comprises two limbs. On the one hand, there is a system of Community trademarks, valid throughout the Community and governed by the Community Trade Mark Regulation. On the other, there are separate systems of national trademarks, each limited to the Member State concerned but to a very large extent harmonized by the Trade Marks Directive.

CONTD

Relative grounds for refusal or invalidity of registration - The 11th recital of the TMD together with art.4 (1)(b) TMD and the 8th recital of the CTMR together with art.8 (1)(b) Trademark infringement Art. 5 (1) (b) TMD, art. 9 (1) (b) CTMR. According to the abovementioned provisions, while the basic protection afforded by community trademark law is absolute in the case of the so called double identity in the cases of: Similarity between the mark and the sign and identity between the goods or services; - Identity between the mark and the sign, but only similarity between the goods and services; - Similarity between the mark and the sign and similarity between the goods and services; the likelihood of confusion is the specific condition for such protection.

PRINCIPLES FOR INTERPRETATION OF THE LEGISLATIVE FRAMEWORK

The likelihood of confusion must be appreciated globally, taking account of all relevant factors; The average consumer normally perceives a mark as a whole and does not proceed to analyze its various details; A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and services, and vice versa; There is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; Mere association, in the strict sense, that the later mark brings the earlier mark to mind, is not sufficient for establishing a likelihood of confusion; The reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

DEFINITION OF LIKELIHOOD OF CONFUSION

In

likelihood-of-confusion cases under current law as interpreted that it follows from this essential function of a Community trademark that likelihood of confusion must be defined by reference to the risk that the public may attribute the same origin to the goods or services, i.e. the risk that the public might believe that the goods and services in question come from the same undertaking or from economically linked undertakings.

Types of likelihood of confusion

Confusion

between the marks themselves ( direct confusion)

No

confusion between the marks themselves but confusion as to origin (indirect confusion)

HOW COURT ANALYSES LIKELIHOOD OF CONFUSION TEST IN TRADEMARK INFRINGEMENT CASES ?

Strength of the mark; Proximity or relatedness of the goods; Similarity of the marks (especially in sight, sound and meaning); Evidence of actual confusion; Marketing channels: Type of goods and purchaser care (meaning how much care a purchaser takes before buying the product); Intent when choosing the mark; and Likelihood of expansion of the product lines.

LIKELIHOOD OF CONFUSION IN INDIAN LAW

Section

29 (4) is palpably an exception to the scheme of the Act and applies only to those trademarks which have earned a reputation in India. If it is prima facie clear or it is proved through evidence that the concerned trademark enjoys and commands a reputation in India, the plaintiffs do not have to prove deception on the part of the defendants or the likelihood of the customer being misled because of the use of the challenged trademark relief would be available even if the purveyed goods are not similar and/or fall in the same category or class.

CONCLUSION

As the law involving likelihood of confusion moves forward in the next century, we can anticipate a tension between the right to protect trademark rights and the conflicting right to share in anothers goodwill when there is no deception. We should not hope for an expansion of trademark rights into a right in gross, for that limits the choices available in the market while failing to further the interests of the public in avoiding confusion. We can hope that the courts will establish rational and consistent limits on trademark rights that fully protect the legitimate interests of owners, competitors and the public. The touchstone for achieving that goal is the sound application of the likelihood of confusion principle.

THANKING YOU