Trademark infringement law: Differing indirect confusion definitions in the EU and UK

Trademark disputes can have starkly different outcomes in different jurisdictions, as demonstrated by a number of parallel EU and UK oppositions. UK Trademark Attorney Mona Asgari examines the different positions taken by the EUIPO and UKIPO in a recent opposition based on indirect confusion and emphasises the importance of local representation.

It is becoming increasingly apparent that the UK Intellectual Property Office (UKIPO) and European IP Office (EUIPO) take a contrasting stance on how they perceive indirect confusion. Following Brexit, a number of UK and EU parallel oppositions demonstrate this, including the recent case of ASICS Corporation v World Champion Imprint Club Limited.

Both the UK Trade Marks Act 1994 and the EU Trade Mark Regulation expressly state that “the likelihood of confusion includes the likelihood of association with the earlier trademark”. However, in ASICS v World Champion Imprint Club, there was a stark contrast between the registries’ positions on this point of trademark infringement law.

In November 2022, Novagraaf client ASICS Corporation was successful in its UK opposition against World Champion Imprint Club, with the UKIPO finding a likelihood of confusion on the basis of indirect confusion. Yet merely months earlier, the EUIPO held (in oppositions B3142170 and B3142186) that there was no likelihood of confusion between the respective marks.

Indirect confusion

ASICS opposed World Champion Imprint Club’s applications at both the UK and EUIPO based on its swirl logo (pictured below).

World Champion Imprint Club Limited’s opposed trademark applications

ASICS Corporation’s earlier trademark

On considering the likelihood of confusion, the UKIPO referred to the types of indirect confusion as set out in the well-known LA Sugar case:

“Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning – it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognised that the later mark is different from the earlier mark.”

While the facts of the case did not directly fit the categories set out in LA Sugar, it was held that the examples of indirect confusion discussed in the ruling were not exhaustive.

The UKIPO’s analysis included considerations as to the position in the market. It concluded that where there is enhanced distinctiveness and reputation, as in the case of ASICS’ earlier marks, there is scope for a logical brand extension or sub-brand leading to indirect confusion. Therefore, the decision, which ran to almost 60 pages, was taken that the trademarks applied for by World Champion Imprint Club created a likelihood of association and the opposition succeeded.

Contrasting EU trademark infringement law

The EUIPO’s assessment, on the other hand, did not encompass the considerations extending to indirect confusion. It held that the opposed marks were figurative consisting of verbal elements, whereas the earlier marks were abstract figurative elements, so they could not be compared and therefore no likelihood of confusion could exist.

The principles from the important Sabel decision were at play. In this landmark case, the ruling stated:

“The criterion of likelihood of confusion which includes the likelihood of association […] is to be interpreted as meaning that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision.”

The comparison of the marks stopped here and no likelihood of confusion was deemed possible by the EUIPO. This stems from a long line of case law and EUIPO decisions that hold that likelihood of association concerns families or series of marks.

Therefore, the position in the EU is that a likelihood of association is not considered to be an alternative for finding a likelihood of confusion. In practice, it means that the assessment of a likelihood of association is often ignored. The EUIPO’s comparison of the marks, with no series or family of marks at play, found the marks dissimilar on face value and rejected the oppositions. The decisions each ran to only five pages.

The importance of local representation

The starkly different outcomes provide a good example of why multiple representatives should be involved in trademark enforcement and contentious matters in different jurisdictions. For example, it is advisable to engage a UK firm, like Novagraaf, to manage your trademark enforcement and watching strategy and to defend your rights in trademark infringement law disputes in the UK.

Conducting availability searches prior to filing new trademark applications is also recommended to avoid potentially infringing on existing rights by way of indirect confusion.

For additional information or insight on direct or indirect confusion, please speak to your Novagraaf attorney or get in touch below.

Mona Asgari is a UK Trademark Attorney based in Novagraaf’s London offices.