The community trade mark opposition system : identical or similar marks and the requirement of confusion

Abstract

The increase of those acquiring Intellectual Property Rights both internationally and in the European Union (EU) has been substantial in the past years. To address this situation, in relation to trade marks, in 1993 the Community Trade Mark Regulation (CTMR) was introduced in the hope of providing a distinctive and unitary regime for trade mark registration, while including a sufficient Opposition Procedure for those interested in opposing a registration application. Substantially, this regulation has been successful in offering owners of earlier registered or non-registered marks the opportunity to oppose a registration application on basis of Relative Grounds for Refusal. These relative grounds are provided for in Article 8 of the CTMR. The fundamental scope of this thesis is that of examining particular Relative Grounds for Refusal which an Opposition can be based on. The study firstly examines the meaning of ‘identical earlier trade marks’ and how an Opposition can be sustained upon identifying that the trade mark applied for, and the goods or services for which registration is applied, are identical to those of an earlier trade mark. It also examines the situation in which such ‘earlier marks’ and the ‘goods or services’ the mark assimilates with, are not identical but ‘similar’ to the trade mark applied for. Here, the notion of ‘likelihood of confusion’ is thoroughly examined through case law and a number of elements which are required for an opposition to be upheld on such grounds. Furthermore, the thesis examines other aspects related to the Opposition Procedure which include; the meaning of an ‘earlier trade mark’, how an opposition can be filed by proprietors of non-registered trademarks while also giving an overview of the proposed amendments to the European Trade Mark Law. Due importance is also given to the local situation which does not currently provide for an Opposition Procedure.