European Court of Justice: "Sabel/Puma" Decision

Kador & Partner, Munich, Germany by Jennifer Clayton-Chen

On November 11, 1997 the European Court of Justice (ECJ) handed down the eagerly awaited first decision (Sabel v Puma) on the question of the danger of confusion due to association.

In the German Trade Mark Act 1995 a likelihood of confusion between two trade marks as a relative ground for refusal of the registration of a trade mark has been defined to also include the likelihood of association of a trade mark with an earlier trade mark. This association is of major importance in cases where at least one of the trade marks in issue is a picture. According to German case law the registration of a picture does not provide protection for the motive shown in the picture. This case law in combination with the Trade Mark Act gave rise to the question presented to the European Court of Justice whether in a case where one trade mark is a mark showing a word and a picture, the other is a picture not enjoying any particular recognition on the market and both being registered for identical or similar goods, the fact that the picture of both trade marks have the same imaginative content (in the case in issue: a bounding feline) is sufficient to accept a danger of confusion between these two trade marks. The Court decided that the mere association which the related fields may establish due to the correspondences in the imaginative content of two trade marks can by itself not give rise to a likelihood of confusion including the likelihood of the trade mark being associated with the earlier trade mark.

From this decision it is now obvious that the association of a mark with the earlier mark has to be considered together with other aspects which affect the likelihood of confusion, such as the recognition of the trade mark on the market, the imaginative content of the earlier trade mark and the overall impression. The association is thus not to be considered as being an alternative to the danger of confusion due to the similarity of the trade marks, but as a definition of the extent of the likelihood of confusion.

Consequently, oppositions filed against pictorial trade marks or based on such trade marks have to be supported by sufficient arguments and proof to show that besides the mere association also a danger of confusion between the two trade marks for the related fields can be assumed.