Confusion about the public:

when is it relevant?

BMM – Annual Meeting

Alicante 16 October 2009

Tjeerd Overdijk
VONDST Advocaten
The problem (1):
 Watches of the mark XX are well-known
 among wealthy consumers?
 among the general public?
 For assessing reputation, confusion etc.:
should we look at wealthy consumer and/or
general public?
The problem (2):
 The profile of bicycle tyres V are claimed to
be distinctive sign of origin
 among professionals in the trade?
 among the general cyclists?
 For assessing distinctiveness: should we look
at the informed professional in the trading
channels and/or general public?
The problem (3):
 The brand of a new pharmaceutical drug YY
is (is not) confusing for
 the end users / patients?
 the doctors and/or pharmacists?
 For assessing distinctiveness, reputation,
confusion etc.: should we look at end users
and/or medical profession?
The general issue:
 The ‘public’ addressed by a trade mark is often
multiform – different groups of addressees: end
consumers; traders; other professionals; different
territories; different languages;
 Between these groups a trade mark may or may not
fulfil its function(s), or fulfil its functions in a different
manner;
 How do we make the assessments which must take
into account “the public”?
 When is the public ‘relevant’ public?
When does the issue arise?
 Is the sign a trade mark?
 Distinctiveness (incl. acquired distinctiveness, mark
turned generic) (3, 12 HD; 7, 50(1)b CTMR);
 Genuine use (12(1) HD; 50(1)a CTMR);
 Reputation (5(2) HD; 9(1)c CTMR);
 Liability to deceive or mislead
(3g, 12(2)b HD; 7(1)g CTMR);
 Confusion (4(1)b & 5(1)b HD); 9(1)b CTMR);
 Advantage or damage (5(2) HD; 9(1)c CTMR) .
The rules:
 HD, CTMR, BIPC: “the public”; “in the trade”;
 Why should public be ‘relevant’?
 ‘Relevant public’ = invention of the courts;
 First mention of ‘relevant public’?
The rules – genuine use
 There is ‘genuine use’ of a trade mark where the mark
is used in accordance with its essential function (i.e. to
guarantee the identity of the origin of the goods or
services), in order to create or preserve an outlet for
those goods or services – i.e. noticeable for the
relevant public (ECJ 11-03-03 C-40/01, Ajax/Ansul);
 Relevant market (public) for genuine use is not only
end consumer, but may also consist of distributors (SC
23-12-05, Sidoste / Bonnie Doon)
 Even minimal use or use by a single importer can be
sufficient (ECJ 27-01-04 C-259/02 La Mer).
The rules – distinctive character
 The distinctive character of a trade mark within the
meaning of Article 3(1)(b) must be assessed by
reference, first, to the goods or services in respect of
which registration is sought and, second, to the
perception of the relevant persons, namely the
consumers of the goods or services.
 (ECJ 08-04-03 C-53-55/01 (Linde-Winward-Rado))
ECJ 16-07-98 C-210/96 (Gut Springenhei-
de, Tusky / Okd Kreis Steinfurt - ALü)
 Ready-packed eggs with the
description '6-Korn — 10 frische
Eier‘ (six-grain — 10 fresh eggs).
According to the company, the six
varieties of cereals in question
account for 60% of the feed mix
used to feed the hens.
 Breach of Paragraph 17(1) of the
German Foodstuffs and Consumer
Goods Law under which
misleading descriptions were
prohibited.
The average Gut Springenheide
consumer
 Questions asked to ECJ:
1) (a) actual expectations or (b) objectified concept of a
purchaser?
2) If (a): informed average consumer or casual consumer?
3) If (b): Definition of objectified purchaser?
 Answer: court must take into account the presumed
expectations of an average consumer who is reasonably
well-informed and reasonably observant and circumspect.
From Gut Springenheide to Lloyd
ECJ 22-06-99 C-342/97 (Lloyd/Loint’s)
 Global appreciation of the likelihood of confusion (…), based on the overall
impression created by them, bearing in mind, in particular, their distinctive and
dominant components;
 (…) perception of marks in the mind of the average consumer [who]
normally perceives a mark as a whole;
 For the purposes of that global appreciation, the average consumer of the
category of products concerned is deemed to be reasonably well-informed
and reasonably observant and circumspect (see, to that effect, Case C-
210/96 Gut Springenheide and Tusky [1998] (…). However, account should
be taken (…) that the average consumer [makes no] direct comparison
between the different marks but [has] imperfect picture of them that he has
kept in his mind;
 the average consumer's level of attention is likely to vary according to the
category of goods or services in question.
The average Gut Springenheide
consumer – stricter test or not?
 Prof. Verkade:
ECJ has its eyes on an end user who is more qualified than the
average consumer, because of the two adjectives.
 Van der Kooij: ‘Average’ has been added to distinguish the
normal consumer from the more specialized consumer.
 Prof. Gielen:
The adjectives are merely descriptive for the average consumer,
who is rarely in a position to make a direct comparison and has
to work with an imperfect recollection of what he has seen.
Consumer is not always ‘average’:
CFI 12-06-07 T-441/05 (IVG / OHIM)
 Applicant is undertaking
specialising in property
construction, administration and
management and supplies the
services to professional or private
consumers;
 In the light of the specific nature
and high price of the transactions
generally involved, those services
are aimed at an informed public,
whose level of attention is higher
than that of the average consumer.
Consumer is not always ‘average’:
CFI 10-10-07 T-460/05 (B&O / OHIM)
 B&O applied for 3-D mark of organ
pipe shaped loud-speaker;
 top-of-the-range products
(suggested retail price EUR 1,750);
 marketed through a selective
distribution system;
 target group is restricted to
consumers who are also quality-
minded and invest in the product
only after careful consideration.
CFI 10-10-07 T-460/05 (B&O / OHIM)
 Distribution system or marketing method is
immaterial (“may change”??);
 in the light of the nature of the goods concerned, in
particular, their durable and technological nature, the
average consumer displays a particularly high level
of attention when purchasing such goods [and]
purchases them only after a particularly careful
examination;
 (Cf. Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006]
ECR I-643, paragraph 40 and 41)
The rules: distinctive character (contd)
 Vredestein claimed 3D
mark for its PERFECT-
profile;
 3D mark declared null and
void because general public
does not perceive the
profile of the tyre as a
designation of origin;
 Mind of professional retailer
not relevant.
SC 11-05-01 (Vredestein / Ring 65 –
profile of bicycle tyres)
 Supreme Court:
 Court of Appeal ruled that the professional retailer does
not form part of the relevant public, because he will only
have an advisory role in the decision to purchase; no
predominant influence on decision of end user;
 General public will recognize tyre with PERFECT-profile
as originating from Vredestein only after receiving
advice from professional retailer. [ reference to
Burberry’s II ?? ]
ECJ 29-04-04 C-371/02 (Björnekulla /
Procordia Food)
 Procordia owned trade mark
Boston Gurka;
 Björnekulla sought revocation
claiming that it had become
generic name;
 Procordia claimed that tm was
still distinctive among persons
who deal commercially with the
product – the relevant class on
basis of ‘travaux préparatoires’
of Swedish Law on Trade Marks.
ECJ 29-04-04 C-371/02 (Björnekulla /
Procordia Food)
 Question referred:
 ‘In cases where a product is handled at several stages before it
reaches the consumer what is or are, under Article 12(2)(a) HD, the
relevant class or classes of persons for determining whether a trade
mark has become the common name in the trade for a product in
respect of which it is registered?
 Shorter: what means ‘in the trade’ in 12(2)(a) HD?
 Ruling: in cases where intermediaries participate in the distribution to
the consumer or the end user (…), the relevant classes of persons
(…) comprise all consumers and end users and, depending on the
features of the market concerned, all those in the trade who deal
with that product commercially.
The rules: distinctive character (contd)
 Alcon filed application for CTM BSS
for ‘ophthalmic pharmaceutical
preparations; sterile solutions for
ophthalmic surgery (cl. 5);
 Dr Robert Winzer Pharma GmbH
filed claim for declaration of
invalidity;
 Office: BSS is a descriptive
indication for ‘Balanced Salt
Solution’;
CFI 05-03-03 T-237/01 (Alcon/OHIM)
 In view of the intended use of the goods the relevant
public must be considered to be made up of
ophthalmologists and ophthalmic surgeons
throughout the whole of the European Union;
 the evidence provided was sufficient to show that, in
specialist circles, the term BSS had become
customary as a generic indication for ‘sterile
solutions for ophthalmic surgery’.
The rules: confusion
 Alcon filed application for CTM
Travatan for ophthalmic
pharmaceutical products (cl. 5);
 Opposition from earlier Italian tm
Trivastan (similar products);
 CFI: the products are medicinal
products requiring a doctor’s
prescription. The relevant public is
composed not only of end users,
but also of professionals (doctors
who prescribe the product and
pharmacists who sell it.
ECJ 26-04-07 C-412/05 (Alcon/OHIM)
 the fact that intermediaries such as healthcare professionals are
liable to influence or even to determine the choice made by the
end-users is not, in itself, capable of excluding all likelihood of
confusion on the part of those consumers as regards the origin
of the goods at issue;
 the role played by intermediaries must be in part balanced
against the high degree of attentiveness of users and against
ability of users to make those professionals take into account
their perception of the trade marks at issue and, in particular,
their requirements or preferences.
The rules: language aspects
 If a mark is descriptive in one or more particular linguistic
areas, it must have acquired distinctive character through
use throughout the relevant linguistic area(s);
 In the relevant linguistic area(s) the relevant class of
persons, or at least a significant proportion must identify
the product or service in question as originating from a
particular undertaking because of the trade mark.
 ECJ 07-09-06 C-108/05 (Europolis)
 CFI 15-10-08 T-405/05 (Manpower)
The rules: reputation & unfair advantage
ECJ 12-03-09 C-320/07 (NASDAQ)
 Opposition by The Nasdaq Stock
Market, Inc. under Art. 8(5) CTMR;
 the relevant public to be taken into
consideration will vary according to
the type of injury alleged by the
proprietor of the earlier mark;
 Injury in the form of ‘drawing benefit’
must be assessed by reference to
average consumers of the goods or
services for which the later mark is
requested.
The rules: reputation & territoriality
ECJ 14-09-99 C-375/99 (Chevy)
 For protection extending to non-
similar products or services, a trade
mark must be known by a significant
part of the public concerned by the
products or services which it covers
(not same as general public);
 In the Benelux, it is sufficient if the
trade mark is known by a significant
part of the public concerned in a
substantial part of that territory, which
part may be a part of one of the
countries composing that territory.
The rules: reputation & territoriality
ECJ 06-10-09 C-301/07 (PAGO)
 For protection afforded in Article
9(1) CTMR, a CTM must be known
by a significant part of the public
concerned by the products or
services covered by that trade
mark;
 In view of the facts of the main
proceedings, the territory of the
Member State in question (Austria)
may be considered to constitute a
substantial part of the territory of
the Community.
Conclusions:
 Relevant public = average member of target group;
 Very often trade mark has more than one target
group (end users and professionals in distribution
chain) -> then caution:
 Unclear how to balance perception of either group
(“depending on features of market” and ‘reverse influence’
(Alcon))
 Tendency: end user rules the waves!
 The ‘relevant public’ may vary according to the type
of injury alleged.
 Contact:

tjeerd.overdijk@vondst-law.com

+31(0)20 504 2000