A likelihood of confusion: similar facts, different trademark decisions

Slight variations in evidence can lead to vastly different outcomes in disputes—and prior decisions cannot be relied on as indicators of success, says Massimo Cimoli of De Simone & Partners, Dennemeyer & Associates Italy.

At first glance, seeking a European Union trademark (EUTM) registration for ‘TVR’ would seem relatively straightforward, provided it was available. At any rate, disputes that could arise regarding priority should be obvious on their faces. The reality is less clear-cut.

In two separate cases concerning EUTM applications involving the same parties, the Boards of Appeal of the European Union Intellectual Property Office (EUIPO) came to near-opposite decisions. This illustrates how even slight deviations in evidence can lead to drastically different outcomes in trademark conflicts. 

In the more recent case involving ‘TVR’, the EU General Court upheld on November 29, 2023, a finding of likelihood of confusion in an opposition (Case T-53/23). 

TVR Automotive had filed an application for a figurative mark covering goods in Nice Class 12 (including a wide range of products relating to vehicles and their components). TVR Italia opposed the application based on its earlier EUTM also for goods in Class 12. 

“Contradictory decisions might be expected in different jurisdictions. What is more surprising is to see such occurrences from the same authority.”

The challenge was upheld by the Opposition Division, and this decision was confirmed by the Board of Appeal. 

The latter found that the goods were targeted at the general public and professionals, whose level of attention could vary from average to high; the goods were identical or similar; the marks at issue were visually highly similar and phonetically identical and the earlier mark was of normal distinctiveness. 

The conclusion drawn was that there was a likelihood of confusion.

However, this was not the first trademark dispute between the parties. In fact, the earlier mark in these proceedings—that owned by TVR Italia—had itself been opposed by the predecessor of TVR Automotive, based on its earlier EUTM ‘TVR’, registered for ‘sports cars and their component parts’ in Class 12. 

That opposition was partially unsuccessful, as the Opposition Division found that the goods covered by the prior mark and those specified in TVR Italia’s application were similar only in regard to sports cars and their parts. 

Thus, there was no likelihood of confusion for other products in Class 12, including trucks, mopeds, bikes and buses. This decision was upheld by the EU General Court (Case T‑398/13), with the EUIPO ruling on the remaining pleas not addressed by the Court. Later, the EU Court of Justice (CJEU) dismissed an action (Case T-277/16) against that EUIPO decision given that it called into question res judicata, as Case T-398/13 had become. 

We, therefore, have two decisions a few years apart, with effectively the same parties and similar facts but with opposite conclusions. How can this be explained?

The answer lies in the different nature of the goods involved. As the General Court described this “factual context” in Case T-53/23: “[S]ports cars have a particular purpose since their design focuses primarily on speed and rapidity. In the present case, the goods covered by the earlier mark were compared not to ‘sports cars and their component parts’ in Class 12, but to a wider range of goods in the same class […] which contained, in essence, vehicles and cars in general, whose purpose cannot be restricted to that of sports cars.”

1. Prior decisions

Contradictory decisions might be expected in different jurisdictions. What is more surprising is to see such occurrences from the same authority. 

However, the EUIPO’s trademark guidelines make it clear that the Office is not bound by its previous decisions. As the General Court stated in Case T-281/02, it is “settled case-law […] that the legality of the decisions of the [Office] is to be assessed purely by reference to Regulation No 40/94 and not the Office’s practice in earlier decisions”.

The reasoning and outcome of relevant prior decisions should be “duly considered” by the Office (as happened in the 2023 ‘TVR’ action). Ultimately, the Office must give the greatest weight to the merits of the arguments brought before it. 

“For this reason, even in cases based on comparable facts and involving similar legal problems, the outcome may still vary due to the different submissions made by the parties and the evidence they present”, according to the Guidelines.

Likewise, decisions of national offices and courts—even those of EU member states—do not have a binding effect on the EUIPO.

2. Striking a balance

Inevitably, this implies fine lines at the borders of evidential value and argumentative persuasiveness. Thus, the courts have addressed how to strike a satisfactory balance, giving appurtenant decisions due attention without being bound by them.

In Case C-564/16 P, the CJEU stated that the EUIPO should consider its own prior decisions with heightened care before deviating from them. “Where those [EUIPO] bodies decide to take a different view from the one adopted in those previous decisions, they should […] provide an explicit statement of their reasoning for departing from those decisions.”

An interesting study is the General Court judgment in Case T-883/19 concerning an application for an EUTM for a figurative sign consisting of a single closed line, which was refused by the EUIPO for lack of distinctive character. 

By contrast, an application for a double-lined version filed by the same applicant on the same day for exactly the same goods and services was accepted.

The applicant argued that there was no material difference between the applications. 

However, the General Court not only concluded that the registered mark had a number of differences from the refused mark, but the acceptance of the one had no bearing on the rejection of the other.

3. Global assessment

One of the points these examples highlight is the significance of even minor details when assessing the likelihood of confusion in opposition actions. Going right back to 1997’s Case C-251/95 SABEL v Puma, the courts have emphasised the need to make a global assessment, taking into account and weighing up all relevant factors.

These considerations include (but are not limited to) the similarity of the goods and services, the relevant public and its degree of attention and sophistication, the similarity of the signs and the distinctiveness of the earlier mark.

As the ‘TVR’ story shows, a small change in one of these aspects can lead to a vastly different result. 

Trademark applicants and other interested parties, such as those filing oppositions or invalidation actions, should, therefore, pay close attention to the specific arguments they are making and the evidence that supports them. 

They should also identify related cases and explain how their facts differ, which can be critical to achieving a successful outcome.

Massimo Cimoli is a trademark attorney at De Simone & Partners, part of Dennemeyer & Associates. He can be contacted at mcimoli@dennemeyer-law.com