6 March 2019Trademarks

TM disclaimer has no bearing on confusion assessment: AG

The existence of a disclaimer relating to an element of an earlier trademark shouldn’t have any bearing on the assessment of the likelihood of confusion between that mark and an applied-for trademark.

This is the opinion of advocate general Giovanni Pitruzzella, who today, March 6, issued  advice to the Court of Justice of the European Union (CJEU).

Under Swedish law (and in certain other EU member states), the registration of a trademark can be accompanied by a disclaimer, which makes clear that the descriptive and non-distinctive words in a sign will not be covered by exclusive rights.

In December 2015, individual Mats Hansson applied to register the word ‘Roslagsöl’ as a Swedish trademark, covering class 32 for non-alcoholic beverages and beers. Roslagen is the name of a region on Sweden’s eastern seaboard.

The following year, the Swedish Patent and Registration Office (PRV) refused the application because of the likelihood of confusion between the applied-for mark and the earlier figurative mark ‘Roslags Punsch’.

‘Roslags Punch’, which features the words above a drawing of a boat, covers alcoholic beverages in class 33. Registration of the mark was accompanied by the following disclaimer: “Registration does not give an exclusive right over the word ‘Roslagspunsch’.”

In finding that there was a likelihood of confusion, the PRV noted that both marks began with the descriptive term ‘Roslags’, which was dominant in both signs, and that the two marks were to be used for identical or similar goods.

Hansson then brought an action against the decision, before the Swedish Patent and Market Court, arguing that there was no similarity between the marks and that the word ‘Roslagen’ was commonly used by firms in the region.

During proceedings, the PRV submitted that elements of a mark excluded from protection because of a disclaimer are regarded as lacking in distinctive character and can’t be taken into consideration when assessing the likelihood of confusion.

However, the PRV said that its practice on the registration of geographical names had changed over time and, in accordance with the current rules, the word ‘Roslags’ must be taken into consideration, notwithstanding the disclaimer.

The Swedish court upheld Hansson’s action, finding that there was only a low degree of similarity between the marks and no likelihood of confusion. Soon after, the PRV appealed against the judgment.

In November 2017, the Svea Court of Appeal, Stockholm, stayed proceedings and referred a series of questions to the CJEU, essentially asking whether an element of an earlier mark that is covered by a disclaimer can affect the assessment of the likelihood of confusion.

Today,  Pitruzzella concluded that the existence of a disclaimer should not affect the determination of the degree of distinctiveness of the mark nor the final assessment of the likelihood of confusion.

“More generally, the existence of a disclaimer, ... should not, in my view, alter the rules for the assessment of the likelihood of confusion, which have been harmonised at EU level,” said Pitruzzella.

He added that just because a component of a complex mark is covered by a disclaimer, doesn’t justify the automatic exclusion of that component from the assessment of the overall impression of the mark.

“Indeed, to exclude from consideration the element covered by a disclaimer would both alter the actual determination, on the basis of the public’s perception, of the overall impression created and render it necessary to ‘dissect’ the various components of the mark, which would be not only an artificial exercise but one that could prove difficult in practice,” said Pitruzzella in his reasoning.

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