Co-existence is only one factor in overall assessment of likelihood of confusion

European Union

In Höganäs AB v Office for Harmonisation in the Internal Market (OHIM) (Case T-505/10, April 10 2013), the General Court has considered the issue of the co-existence of trademarks within the context of opposition proceedings.

The case concerned the possible likelihood of confusion between the trademarks ASTALOY and HASTELLOY. The proprietors of the trademarks are both manufacturers in the field of metallurgy. The proprietor of the registered trademark HASTELLOY for metal alloys in Class 6 of the Nice Classification had opposed the registration of ASTALOY as a Community trademark (CTM) for iron-based metal powders for industrial use in the same class.

OHIM found in favour of the opponent and rejected the application for ASTALOY based on the likelihood of confusion with the earlier mark HASTELLOY.

The Board of Appeal confirmed the decision, stating that:

  • the goods were similar; and
  • the marks were visually similar to a medium degree and phonetically similar to a high degree.

The applicant’s argument that the marks were already co-existing was rejected, as the Board of Appeal did not find that co-existence before the filing of the application for ASTALOY had been established.

The applicant brought the matter before the General Court, arguing that there was no likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (207/2009), as:

  • the marks at issue were sufficiently different;
  • the relevant public had a high degree of expertise;
  • the sales process was of a specialised nature;
  • there was a close link between the technical capabilities of a metal powder and the trademark under which it is sold; and
  • the marks were already co-existing in the market prior to the filing of the application for ASTALOY.

The General Court confirmed the assessment by the Board of Appeal that the marks were visually and phonetically similar. As the similarity of the products was not contested, the General Court found that a likelihood of confusion could not be excluded at the outset, and went on to consider the argument of co-existence.

The applicant claimed that, due to more than 15 years of peaceful co-existence between the marks, there was no likelihood of confusion. Documentation filed by the applicant included sales statistics and affidavits stating that there had been no instances of actual confusion.

The General Court noted that the possibility cannot be ruled out that the co-existence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion (Aceites del Sur-Coosur (Case C-498/07 P)). As the opposition was based on an earlier CTM, the General Court found that it was for the applicant to establish proof of co-existence throughout the European Union. The sales information as such was considered insufficient to demonstrate use of the mark ASTALOY in all member states; however, the court found that the applicant had shown to the requisite legal standard that the ASTALOY mark was present in all member states.

Having passed that first test, the next question was whether the co-existence was sufficient to conclude that there was no likelihood of confusion. According to the General Court, the co-existence of two marks can be taken into account in the assessment of the likelihood of conclusion only if the evidence indicates clearly that the co-existence was based upon the absence of any likelihood of confusion. The applicant’s evidence did not pass this test.

The General Court went on to state that, even if co-existence based on the absence of confusion were to be established, this would not in itself be sufficient to establish that there was no likelihood of confusion between the marks at issue. Thus, co-existence is only one of all the relevant factors that should be taken into account in the overall assessment of the likelihood of confusion.

This decision provides some useful guidance with regard to the argument that the peaceful co-existence of two marks means that there is no likelihood of confusion. Even if the argument is acknowledged, there are several steps to overcome before it can actually be decisive in the assessment of the likelihood of confusion. The requirement for a market presence in all member states appears to be particularly strict and, therefore, the 'co-existence' argument may be more useful in oppositions based on national registrations, rather than CTMs.

Lisbet Andersen, Bech-Bruun, Copenhagen

Unlock unlimited access to all WTR content