In the Equivalenza judgment, the Court of Justice sets a new rule for assessing similarity between conflicting trade marks. The fact that the assessment is done in two stages is not new, only how to exactly do it. This new rule is important in any trademark conflict, both in oppositions and in infringement proceedings.

In phase 1 it is assessed whether the conflicting signs are visually, aurally and/or conceptually similar to some extent. The overall impression must be determined "in the light of the intrinsic qualities of the signs at issue". In other words: from the signs themselves. Everything that is not apparent from the sign itself therefore does not count in phase 1. So neither how the goods in question are marketed.

In the Equivalenza case, an objection was raised against the application for the EU figurative mark BLACK LABEL on the basis of the earlier figurative mark LABELL for, inter alia, perfumes:

The General Court took account of the fact that perfumes are purchased primarily on sight. The visual differences therefore outweighed the phonetic (auditory) similarities, in line with the method prescribed by the ECJ in 2011 in Ferrero (TiMi Kinderyoghurt). The ECJ has now explicitly departed from this method: it would lead to "absurd" results in that the signs would be declared similar when it comes to one good (e.g. perfumes, low attention level) and perhaps not when it comes to other goods (e.g. medicines, with a high attention level).

From now on, the similarity test must be the same for all goods or services and in all circumstances. Thus, in phase 1 it is no longer taken into account whether a trademark is descriptive of the goods concerned or whether a trademark has acquired a high degree of distinctiveness (reputation). After all, those circumstances also do not result from the intrinsic qualities of the trademark. These will only come into play in phase 2.

If in phase 1 even the slightest similarity is assumed on a visual, aural and/or conceptual level, it must be tested in phase 2 for trademark infringement, whether there is a likelihood of confusion ('sub b') or a connection and then dilution, damage to reputation and/or unjustified advantage ('sub c'). To that extent Ferrero's system has been correctly confirmed. Apart from that, an assessment in phase 2 is also omitted if the goods or services are not similar (sub b) or if the trademark invoked is not 'well-known' (sub c).

Then comes phase 2: an overall assessment which must take into account all the circumstances of the case. Mandatory customisation, in other words. The court must take the elements of similarity and difference established in phase 1 into account in the same way as all other relevant elements, which are now being taken into account. Consider the degree of distinctiveness, the extent to which an element is descriptive, the possible reputation of the earlier trademark, the degree of similarity of the goods, the level of attention of the relevant public and other circumstances of the case. As part of the overall assessment, a particular element of similarity or difference may carry more or less weight in phase 2. The key question in phase 2 is whether the degree of similarity under these circumstances is sufficient to assume an infringement. Each matter needs a tailored approach.

Maarten Haak

New test of 'similarity' of trade marks since Equivalenza