Supreme Court judge dissents on assessment of likelihood of confusion on appeal


It is well known that an appeal to the Supreme Court is not a third instance allowing the court to revise the facts of the proceedings, but an extraordinary channel through which only legal issues can be revised - that is, the Supreme Court can review only the application of the law to the facts established by the trial court. Its ultimate goal is to provide a means to create and unify jurisprudence on issues needing interpretation. For this reason, analysis of the likelihood of confusion in an appeal to the Supreme Court has often been banned, as it was considered to be a question of fact.

However, in a recent decision of January 20 2013, one of the judges of the Supreme Court issued an interesting dissenting opinion in this regard.

The case involved an alleged infringement of Article 9(1)(b) of the Community Trademark Regulation (207/2009), which grants trademark holders the right to prohibit the use of other signs that may be confused with their own trademarks. Specifically, the appellant argued that the court of second instance had erred in finding that there was no likelihood of confusion between its mark and the sign used by the defendant. According to the appellant, the court had departed from the case law establishing that the likelihood of confusion analysis should consist of an overall assessment of all relevant factors.

In its judgment, the Supreme Court recalled that the role of an appeal to the Supreme Court is to ascertain whether the substantive law has been applied correctly to the facts; therefore, the risk of confusion could be reviewed on appeal only if the relevant criteria had not been applied or had been applied erroneously. The Supreme Court thus admitted that the determination of the existence (or lack) of a likelihood of confusion is an issue of law and, as such, is revisable on appeal to the Supreme Court, but only under certain circumstances.

However, the Supreme Court dismissed the appeal on the grounds that the appellant had raised a question of fact that should be assessed by the trial court, which, based on the relevant ‘likelihood of confusion’ factors, had ruled that the graphic and visual differences between the signs were such that, considered together with the other factors, they prevented confusion.

Contrary to the majority of the chamber, Judge Sancho Gargallo disagreed with this opinion, believing that the assessment of the likelihood of confusion is a value judgement which may be revised on appeal to the Supreme Court, if the guidelines set by the Court of Justice of the European Union (ECJ) and the Supreme Court itself have not been properly applied.

Referring to the jurisprudential guidelines for assessing the likelihood of confusion, Judge Sancho Gargallo opined that the appealed judgment had neglected these interpretive guidelines, and proceeded to carry out a new analysis of the likelihood of confusion. According to the judge, the trial court had disregarded the high degree of similarity of the goods and given too much weight to the fact that the signs differed in their third letter and in some graphic elements. In his view, the court should have found that there was a likelihood of confusion. Therefore, the Supreme Court should have upheld the appeal for infringement of Article 9(1)(b) of the regulation, as it has been interpreted by the ECJ.

This dissenting opinion reflects the vague distinction between what is considered to be a question of fact, which cannot be appealed to the Supreme Court except in cases of manifest error, and a value judgment, which may be revised by the Supreme Court. While the assessment of the likelihood of confusion has traditionally been regarded as an issue of fact that is not revisable on appeal to the Supreme Court, the dissenting opinion of Judge Sancho Gargallo, taken to the extreme, would imply that, in practice, an appeal to the Supreme Court would be closer to a third instance.

Carlota Viola, Grau & Angulo, Barcelona

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