IP case law Court of Justice

Likelihood of confusion

any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(relative ground for refusal or invalidity and right conferred by the trade mark)

13 preliminary rulings


Judgment of 20 Jul 2017, C-93/16 (The Irish Dairy Board)

Article 9(1)(b) Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion between that EU trade mark and that sign.

Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the elements which, according to the European Union trade marks court hearing an infringement action, are relevant for assessing whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in part of the European Union not covered by that action, may be taken into account by that court to assess whether that proprietor is entitled to prohibit the use of that sign in the part of the European Union which is the subject of the infringement action, provided that the market conditions and the sociocultural circumstances are not significantly different in one of those parts of the European Union and in the other.

Judgment of 21 Dec 2016, C-654/15 (Länsförsäkringar)

Article 9(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark, read in conjunction with Articles 15(1) and 51(1)(a) of that regulation, must be interpreted as meaning that, during the period of five years following registration of an EU trade mark, its proprietor may, if there is a likelihood of confusion, prevent third parties from using in the course of trade a sign identical or similar to his mark in respect of all goods and services identical or similar to those for which that mark has been registered without having to demonstrate genuine use of that mark in respect of those goods or services.1 Language of the case: Swedish.

Judgment of 22 Sep 2016, C-223/15 (combit Software)

Article 1(2), Article 9(1)(b) and Article 102(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that, where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the European Union whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement of the exclusive right conferred by that trade mark and issue an order prohibiting the use in question for the entire area of the European Union with the exception of the part in respect of which there has been found to be no likelihood of confusion.

Judgment of 22 Oct 2015, C-20/14 (BGW Marketing)

Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in the case of identical or similar goods and services, there may be a likelihood of confusion on the part of the relevant public between an earlier mark consisting of a letter sequence, which is distinctive and is the dominant element in that mark of average distinctiveness, and a later mark which reproduces that letter sequence and to which is added a descriptive combination of words, the initial letters of which correspond to the letters of that sequence, with the result that that sequence is perceived by that public as the acronym of that combination of words.

Judgment of 25 Jun 2015, C-147/14 (Loutfi)

Article 9(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that, in order to assess the likelihood of confusion that may exist between a Community trade mark and a sign which cover identical or similar goods and which both contain a dominant Arabic word in Latin and Arabic script, those words being visually similar, in circumstances where the relevant public for the Community trade mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account.

Order of 10 Mar 2015, C-491/14 (Rossa dels Vents Assessoria)

Article 5(1) of Directive 2008/95/EC of the European Parliament and the Council, of 22 October 2008, to approximate the laws of the Member States relating to trade marks, must be interpreted as meaning that the exclusive right of the proprietor of a trade mark to prevent any third party from using, in course of trade, signs identical with or similar to his mark extends to a third-party proprietor of a later trade mark, without the need for that latter mark to have been declared invalid beforehand.

Judgment of 18 Jul 2013, C-252/12 (Specsavers)

Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.

Judgment of 12 Jun 2008, C-533/06 (O2)

Article 5(1)(b) of Directive 89/104 is to be interpreted as meaning that the proprietor of a registered trade mark is not entitled to prevent the use by a third party, in a comparative advertisement, of a sign similar to that mark in relation to goods or services identical with, or similar to, those for which that mark was registered where such use does not give rise to a likelihood of confusion on the part of the public, and that is so irrespective of whether or not the comparative advertisement satisfies all the conditions laid down in Article 3a of Directive 84/450, as amended by Directive 97/55, under which comparative advertising is permitted.

Judgment of 6 Oct 2005, C-120/04 (Medion)

Article 5(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.

Judgment of 22 Jun 2000, C-425/98 (Marca)

Article 5(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks cannot be interpreted as meaning that where- a trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public, and- a third party, without the consent of the proprietor of the mark, uses, in the course of trade in goods or services which are identical with, or similar to, those for which the trade mark is registered, a sign which so closely corresponds to the mark as to give rise to the possibility of its being associated with that mark,the exclusive right enjoyed by the proprietor entitles him to prevent the use of the sign by that third party if the distinctive character of the mark is such that the possibility of such association giving rise to confusion cannot be ruled out.

Judgment of 22 Jun 1999, C-342/97 (Lloyd)

It is possible that mere aural similarity between trade marks may create a likelihood of confusion within the meaning of Article 5(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. The more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character.

Judgment of 29 Sep 1998, C-39/97 (Canon / MGM)

On a proper construction of Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion. There may be a likelihood of confusion within the meaning of Article 4(1)(b) of Directive 89/104 even where the public perception is that the goods or services have different places of production. By contrast, there can be no such likelihood where it does not appear that the public could believe that the goods or services come from the same undertaking or, as the case may be, from economically-linked undertakings.

Judgment of 11 Nov 1997, C-251/95 (Sabel)

The criterion of 'likelihood of confusion which includes the likelihood of association with the earlier mark' contained in Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 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.

78 appeals


Order of 19 Oct 2017, C-224/17 (Hernández Zamora v EUIPO and Rosen Tantau)


Judgment of 5 Oct 2017, C-437/16 (Wolf Oil v EUIPO)


Order of 20 Sep 2017, C-158/17 (Anton Riemerschmid Weinbrennerei und Likörfabrik)


Judgment of 26 Jul 2017, C-182/16 (Meica v EUIPO)


Judgment of 26 Jul 2017, C-84/16 (Continental Reifen Deutschland v Compagnie générale des établissements Michelin)


Order of 20 Jun 2017, C-662/16 (Laboratoire de la mer v EUIPO)


Judgment of 3 Mar 2017, C-655/15 (Panrico v EUIPO)


Judgment of 8 Nov 2016, C-43/15 (BSH - KOMPRESSOR)


Judgment of 26 Oct 2016, C-482/15 (Westermann Lernspielverlag v EUIPO)


Order of 21 Jun 2016, C-619/15 (Mocek v EUIPO)


Order of 14 Apr 2016, C-480/15 (KS Sports v OHIM)


Order of 17 Feb 2016, C-396/15 (Shoe Branding Europe v adidas)


Judgment of 21 Jan 2016, C-50/15 (Hesse v OHIM )


Order of 19 Nov 2015, C-190/15 (Fetim v OHIM)


Judgment of 15 Oct 2015, C-270/14 (Debonair Trading Internacional)


Order of 17 Sep 2015, C-548/14 (Arnoldo Mondadori Editore)


Judgment of 9 Jul 2015, C-249/14 (Pêra-Grave)


Order of 4 Jun 2015, C-579/14 (Junited Autoglas Deutschland)


Order of 3 Jun 2015, C-142/14 (Sunrider Corporation)


Judgment of 19 Mar 2015, C-182/14 (Mega Brands - MAGNEXT)


Order of 26 Feb 2015, C-414/14 (Fundação Calouste Gulbenkian - GULBENKIAN)


Order of 12 Feb 2015, C-370/14 (Argo Group International Holdings)


Order of 13 Jan 2015, C-320/14 (Asos)


Judgment of 20 Nov 2014, C-581/13 (Intra-Presse - GOLDEN BALLS)


Order of 17 Jul 2014, C-468/13 (MOL)


Order of 15 Jul 2014, C-675/13 (Zoo Sport)


Order of 19 Jun 2014, C-670/13 (The Cartoon Network)


Order of 12 Jun 2014, C-285/13 (Bimbo)


Judgment of 8 May 2014, C-591/12 (Bimbo - BIMBO DOUGHNUTS )


Order of 10 Apr 2014, C-374/13 (Metro)


Order of 30 Jan 2014, C-422/12 (cloralex)


Judgment of 23 Jan 2014, C-558/12 (WeserGold)


Judgment of 17 Oct 2013, C-597/12 (Isdin)


Order of 30 May 2013, C-14/12 (Sheilesh Shah - AYUURI NATURAL)


Order of 14 May 2013, C-294/12 (Beatle)


Order of 8 May 2013, C-268/12 (Cadila Healthcare)


Judgment of 21 Feb 2013, C-655/11 (Seven for all mankind)


Order of 29 Nov 2012, C-42/12 (ALPINE PRO SPORTSWEAR & EQUIPMENT)


Judgment of 6 Sep 2012, C-327/11 (United States Polo Association)


Judgment of 24 May 2012, C-196/11 (Formula One Licensing)


Order of 8 Mar 2012, C-81/11 (Longevity - RESVEROL)


Order of 29 Jun 2011, C-532/10 (adp Gauselmann - Mercury)


Judgment of 16 Jun 2011, C-317/10 (Union Investment Privatfonds)


Judgment of 24 Mar 2011, C-552/09 (Ferrero - TiMi KiNDERJOGHURT)


Order of 14 Mar 2011, C-370/10 (Ravensburger - educa)


Order of 15 Feb 2011, C-353/09 (Perfetti Van Melle - CENTER SHOCK)


Order of 23 Nov 2010, C-204/10 (Enercon )


Judgment of 2 Sep 2010, C-254/09 (Calvin Klein - CK CREACIONES KENNYA)


Order of 9 Jul 2010, C-461/09 (The Wellcome Foundation - FAMOXIN)


Judgment of 24 Jun 2010, C-51/09 (Barbara Becker)


Order of 4 Mar 2010, C-193/09 (Kaul - ARCOL)


Order of 22 Jan 2010, C-23/09 (ecoblue)


Order of 15 Jan 2010, C-579/08 (Messer - Ferromix, Inomix and Alumix)


Order of 24 Sep 2009, C-481/08 (Alcon - PROVISC and DUOVISC)


Judgment of 3 Sep 2009, C-498/07 (Aceites del Sur-Coosur - La Española)


Order of 10 Jul 2009, C-416/08 (Apple Computer - Quartz)


Order of 3 Jun 2009, C-394/08 (Zipcar)


Judgment of 7 May 2009, C-398/07 (Waterford Wedgwood)


Judgment of 26 Mar 2009, C-21/08 (Sunplus Technology - SUNPLUS)


Judgment of 18 Dec 2008, C-16/06 (Éditions Albert René - Mobilix)


Judgment of 11 Dec 2008, C-57/08 (Gateway)


Judgment of 18 Sep 2008, C-514/06 (Armacell - Armafoam)


Judgment of 17 Jul 2008, C-488/06 (L & D - Aire Limpio)


Judgment of 13 Sep 2007, C-234/06 (Il Ponte Finanziaria - BAINBRIDGE)


Order of 11 Sep 2007, C-225/06 (AVEE - Ferro)


Judgment of 12 Jun 2007, C-334/05 (Shaker - Limoncello)


Order of 7 Jun 2007, C-216/10 (AirPlus - A+)


Judgment of 26 Apr 2007, C-412/05 (Alcon - TRAVATAN)


Order of 24 Apr 2007, C-131/06 (Castellblanch)


Judgment of 15 Mar 2007, C-171/06 (T.I.M.E. - QUANTUM)


Order of 9 Mar 2007, C-196/06 (Alecansan - compusa)


Order of 29 Jun 2006, C-314/05 (Creative Technology - PC WORKS)


Judgment of 11 May 2006, C-416/04 (Sunrider - Vitafruit)


Order of 27 Apr 2006, C-235/05 (L’Oréal - FLEXI AIR)


Judgment of 23 Mar 2006, C-206/04 (Mülhens - ZIRH)


Judgment of 12 Jan 2006, C-361/04 (Picasso)


Judgment of 12 Oct 2004, C-106/03 (Vedial - Hubert)


Order of 28 Apr 2004, C-3/03 (Matratzen Concord - Matratzen)