the UK).
Section 5(3) of the 1994 UK Trade Marks Act provides that an
earlier mark can be a relative ground to refusal for a trade mark
application if there is either a) identity of marks and similarity of
goods, or b) similarity of marks and similarity of goods.
Additionally, and very importantly, there has to exist a “likelihood of
confusion which includes the likelihood of association”.
In assessing the likelihood of confusion, guidance was received by
the ECJ in Sabel v Puma. Firstly the court states that the likelihood
of association cannot replace the likelihood of confusion, but it is
included in its concept and serves to define its scope. It is in itself
not sufficient to establish a likelihood of confusion, there must be
additional marks, e.g. a high degree of distinctiveness of the
earlier mark.
Secondly, it states that in assessing confusing similarity of the
marks, a global approach has to be taken, having regard to various
factors, such as the recognition of the trade mark in the market, the
association that can be made between the registered trade mark
and the sign, and the degree of similarity between trade mark and
the sign as well as the similarity of the goods or services. These
must be assessed through the eyes of the average consumer who
tends to perceive a trade mark as a whole rather than dissecting it
into its various elements.
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