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Confused or likely to be confused?

February 28, 2020, By

In the world of trade marks “confusion” is a big thing. Well actually it’s the “likelihood of confusion” that’s a big thing, actual confusion isn’t actually required – confused? Yes, me too and let’s hope this blog doesn’t confuse things.

So why is the “likelihood of confusion” such a big deal: well I am glad you asked, in trade mark infringement and opposition proceedings to be successful a claimant, in most circumstances, must show three things: 1) the identity or similarity of marks; 2) the identity or similarity of goods and services; and 3) (you guessed it) a likelihood of confusion on the part of the public, which includes the likelihood of association – but let’s not confuse things.

Courts across England and Wales and the EU have considered the subject of this blog on a number of occasions. It turns out that defining what is meant by a likelihood of confusion is a tricky thing to do.

The Court has defined confusion as to origin to be “the risk that the public might believe that the goods and services in question come from the same undertaking or, as the case may be, from economically linked undertakings”. This can be explained as being a likelihood of confusion will exist when a consumer assumes the goods and services are marketed under the authorisation of the trade mark owner.

To confuse things further, there exists two types of confusion: the first is when the consumer directly confuses the trade marks themselves. The second is when the consumer makes a connection between the conflicting signs and assumes that the goods or services covered are from the same or economically linked undertakings.

This means that overall, actual confusion is not required in most trade mark proceedings, instead we need a “likelihood of confusion”.

If you would like to discuss confusion (actual, a likelihood or otherwise) please do not hesitate to get in touch with us on [email protected] or 020 72886003 and one of our specialist IP lawyers will be happy to have a consultation with you without charge.

Written by Sam O’Toole, Solicitor

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