Strong trade marks and the likelihood of confusion in European law

Legal context. One of the fundamental assumptions of trade marklaw is that provision should be made to prevent the registrationor commercial exploitation of trade marks that are likely tobe confused with earlier marks. The justification for this assumptionis however unclear. Is it to protect the expectation of itsowner that a trade mark will provide a comfort zone, an areawithin which other traders simply may not enter? Is it to encourageinvestment in the development of a relationship between thetrade mark owner and his prospective customers by offering interference-freemarketing opportunities? Is it to protect the efficiency ofthe market by facilitating the making of decisions by consumersas to which product or process they wish to purchase? Or isit to protect the vulnerable consumer against the personal consequencesof his inattention or inability to discern the differences betweenproducts or services? Key points. This article examines the development of Europeanlaw relating to the protection of strong trade marks, thosewhich are highly distinctive or well known, against similarmarks that may or may not be likely to cause consumer confusion.It demonstrates the manner in which the European Court of Justiceseeks to address the likelihood of confusion in terms whichappear to draw more from legal abstractions than from marketrealities. After giving a favourable review of the controversialdecision of that court in the PICARO/PICASSO case, the articlelists further issues which European trade mark litigation hasso far failed to address. Practical significance. Armed with an understanding of the principlesemployed by the European Court of Justice, trade mark proprietorsin Europe will obtain a better appreciation of the strategiesto be used in either challenging competitors' marks in courtor adopting commercial measures to combat them.     

Registration of terms borrowed from another language

In answer to a question referred by a Spanish Court in a disputeas to the validity of the Spanish trade mark MATRATZEN, theEuropean Court of Justice (ECJ) has ruled that trade mark ownersare not precluded by Article 3(1)(b) or (c) of the Trade MarksDirective (Council Directive 89/104) from registering in oneMember State a term borrowed from another language, unless itcan be demonstrated that relevant public in the Member Statein which registration is sought are capable of identifying themeaning of the term.     

Time to play Catch-Up

‘Catch Us If You Can!!!’ is the improbable nameof an Italian weblog managed by Lorenzo Litta and mastermindedby veteran IP expert Stefano Sandri. Although it is rarely possibleto measure what a blog achieves, it is usually quite feasibleto identify what it tries to do. In this instance the bloggers’objective is to raise their readers’ sensitivity towardsintellectual property rights issues and to create a greaterawareness of the parameters of protection and permitted usein a culture which places a     

Disappointment for cigar enthusiasts: no implied consent to imports of Cuban cigars

In a recent decision judge Fysh QC, sitting as a High CourtJudge, ruled that a consignment of genuine cigars originatingfrom Cuba infringed UK and Community trade marks owned by aCuban company since there was neither express nor implied consentto their importation.     

Veni, vidi, wiki

‘Veni, vidi, vici!’ (‘I came, I saw, I conquered’),Julius Caesar's memorable soundbite from the Battle of Zelain 47 BC, has been for nearly two millennia a byword for thetriumph of the new order over the old. Substitute the homophone‘wiki’ for ‘vici’ and the symbolismremains apt. While the rise of the personal computer, the developmentof the internet and the advent of mobile telephony have eachbeen hailed as the greatest transformative feature     

A failed 'nationalist' endeavor: Egyptian-Sudanese textile trade, 1935-1945

This article examines the attempts of Egypt's nationalist elite to develop economic ties with the Sudan in the hope of strengthening their argument for sovereignty over Sudanese regions. While reviewing Egyptian 'claims' of a culturally, historically, linguistically, and religiously united Nile valley, I examine what scholars of nationalism have theorized are essential conditions and objectives in successful nationalist movements--emphasizing the virtually irrelevant position accorded economic bonds typically. The bulk of the article is an analysis of Egyptian-Sudanese textile trade between 1935 and 1945. This analysis includes an examination of the institutional means established to foster trade with the Sudan, a brief statistical assessment of the textile trade, and an explanation of the causes of failure in these endeavors. Finally, the conclusion links this case study to the question of whether or not economic development, as a nationalist activity binding regions together, can occur prior to state formation.