Initial interest confusion under EU trade mark law

Initial interest confusion is a concept in trade marks law which allows for a finding of liability where a brand owner can demonstrate that a consumer was confused by a defendant’s sign at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase.

The position in the European Union was considered in detail by Mr Justice Arnold in Och-Ziff Management Europe Ltd and Anor v OCH Capital LLP & Others[2010] EWHC 2599 (Ch) (iPit post here).

The most frequently used illustration of the concept relates to a roadside branding which relies on a deception which is later corrected but only at the point where the consumer has invested enough time in pursuing the “bait” that he finds it easier to simply purchase from the deceiver rather than travel to the true brand owner.

The case of, BP Amoco plc v John Kelly Ltd [2002] FSR 5, involves petrol stations rather than video stores and relates to UK trade marks registration numbers 1469512 and 1469513 (shown below).  It illustrates the issue well:

BP was the proprietor of a registered trade mark for the colour green as applied to the exterior surface of the premises used for the sale of the goods, which was registered for goods which included lubricants and fuels in Class 4. The first defendant adopted a petrol station design which featured the colour green. The Court of Appeal of Northern Ireland upheld the claim for trade mark infringement.

…[W]hen a motorist travelling at speed sees a green station, at a distance at which the logo cannot be made out, and starts to make preparations to turn off into the station, he is liable to continue his manoeuvre even though he may descry the logo as he nears the station and appreciate that the petrol on sale is that of the respondents and not of BP. As he put it, the antidote to the bane has not been applied and that is a customer lost. We consider that there is force in this contention.

The use of an identical mark in relation to identical goods or services in the European Union does not require a likelihood of confusion.  However, the guidance from the Court of Justice of the European Union makes clear that it does require that there is an adverse effect on the one of the functions of the trade mark (see in particular Case C-487/07 L’Oréal SA v Bellure NV [2009] ECR I-5185).

However, where the marks are not identical, can there be infringement where there is no confusion as to origin at the point of sale?

Article 5(3)(d) of the Harmonisation Directive 2008/95/EC states that the use of the sign on business papers and in advertising may constitute trade mark infringement.

Furthermore, the CJEU stated in Interflora (iPit post here) and Die Bergspechte (iPit post here) that the use in advertising of a sign similar to a registered trade mark relating to similar goods or services is sufficient for there to be infringement.  These cases are supported by the rationale that only a likelihood of confusion is required and not actual confusion and follow the reasoning in Google France (iPit post here) and Portakabin (iPit post here) that:

where a third party’s ad suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on the function of indicating origin.

The likelihood of confusion must be assessed at the moment when the advertisement is viewed, whether or not it leads to a sale and whether or not there is any confusion at the time of the sale.  This is because although there may be no diversion of sales, the confusing advertisement may:

  • Affect the reputation of the mark
  • Erode the distinctiveness of the mark

In short, no sale is required in order to infringe.

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