European Union: The Likelihood Of Confusion In The European Union Trade Mark Opposition Procedure – Part II

In light of an opposition procedure under Article 8 of the European Union Trade Mark Regulation (EUTMR)1, one must assess the similarity between marks to establish the possibility of finding 'likelihood of confusion', in conjunction with the similarity between goods and services, which was discussed in Part I of this piece.

In the assessment of marks, there is a very fine line between finding a mark to be similar or dissimilar, which line is not always easy to define. For most cases, it is sufficient to globally assess the marks through three important elements, which elements were firstly introduced in the Sabel vs Puma case2 but still remain of great importance today. These elements are the following:

  1. Visual similarity

The visual element is naturally the main criterion of assessment since marks are mostly perceived visually. Yet, it is also the most complex one since it includes any textual content, colour, shape, size and position, thus not all visual comparisons might be the same. As an example, a visual comparison involving word marks is not the same as a visual comparison involving figurative marks.

As an example, the Courts have found the following marks visually similar since there was no high variation in the style of the word elements in the figurative marks in comparison to the word element which was easily recognisable and legible:

In the case of Stephanie Scatizza vs Office for Harmonization in the Internal Market (OHIM)5, involving the below figurative marks, the Court assessed the marks visually and came to the conclusion that the difference between them was not satisfactory in avoiding a frail degree of similarity between them and the Court still found 'likelihood of confusion' due to the identity of the goods and the marks being conceptually identical and phonetically similar.

However, these are not the only types of visual similarities one might come across. The EUIPO (European Union Intellectual Property Office), in its guidelines6, makes reference to other types of visual comparisons including the comparison between the below signs which were all found to be similar:

  • Purely figurative signs vs purely figurative signs;
  • Stylised marks vs stylised marks;
  • Word/figurative signs vs purely figurative signs;
  1. Aural (phonetic) similarity

The syllables, along with their sequence and stress, form the major elements which determine the overall phonetic impression of a mark. A single letter can also be compared phonetically when there is a reproduction of that sole letter.

A landmark judgment which assessed the examination of the aural element was the case of Lloyd vs Schufabrik10 in which the Court held that:

"It is possible that mere aural similarity between trade marks may

create a likelihood of confusion"

The Court stated that, while aural similarity can cause sufficient confusion on its own, the assessment whether the threshold of the likelihood of confusion has been reached would depend upon the overall picture of the mark and several other factors, such as whether the sound has any additional connotation to its meaning or whether the mark contains any element descriptive of the goods or services it represents.

In assessing aural similarities, one must also take into consideration symbols and abbreviations such as '&' and '@' and ask whether these would be considered in the phonetic assessment. Indeed they are, since they are generally read and pronounced, and thus should be included. When it comes to marks that consist of foreign and/or invented words, it is assumed that the relevant public is not familiar with how foreign native speakers will pronounce their language, thus the public will possibly pronounce a foreign word as per their own language's phonological rules, rendering it unintentionally similar to the foreign word. The LIDL case was a clear example of this, in fact, the OHIM concluded that since the first two letters and the last one were the same in both marks;

"LIDL will often be pronounced as if it spelt LIDEL. For phonological reasons, D and L are nearly impossible in most languages to pronounce without uttering a vowel between them. So, the marks would sound LIFEL and LIDEL in languages like Spanish, Italian, German, and French. The degree of similarity is very high, because the two sounds only differ in the middle of the words (F instead of D)."11

Nonetheless, the above interpretation would not be followed in cases where the relevant public is familiar with a foreign word, for example, in the case of the English language, which is a language presumed to be known worldwide and where the relevant public would be familiar with the word. This also applies where particular terminology is known by the relevant public for certain classes of goods or services.

  1. Conceptual similarity

The final element to assess is related to signs which are identical or similar conceptually. This is generally examined through the analogue semantic content of the mark, which is essentially related to what the mark means, what it suggests or when a shape or image is used and what it represents. In this case, the comparison is generally not influenced by the relevant goods or services but rather how the term is perceived by the relevant public.

The Opposition Division of the EUIPO generally follows the reasoning that if none of the signs have any concept, then no conceptual comparison is possible, while if only one of the signs evokes a concept, the signs would not be conceptually similar either. It is only when both signs have a concept that the examiners go ahead with conducting a conceptual comparison to establish if the signs are conceptually identical or similar. The five main scenarios when such comparison takes place are when:

  • Both marks share a word and/or expression;
  • Words or terms have the same meaning, in different languages;
  • Words refer to the same or a variation of a semantic term;
  • Two figurative signs, shapes and/or symbols represent the same object or idea; and
  • Word vs figurative sign, symbol, shape and/or colour representing the concept behind the word.

These elements are to be taken into account along with the overall impression created by the marks, whilst keeping in mind the distinctive and dominant characters of the marks as well as the relevant public.

During the 'likelihood of confusion' assessment, various factors are considered in order to evaluate the similarity of marks and the likely risk of confusion. Every factor must firstly be examined in isolation, and subsequently a comprehensive analysis would be required to assess the interrelationships between these elements.

Of course, there are certain elements and comparisons which prevail over others. The visual similarity, for example, in the comparison of marks, is generally considered as a dominant element. On the other hand, mere conceptual similarity is unlikely to lead to 'likelihood of confusion', unless the earlier mark has a strong distinctive character. However, these factors are not only assessed separately, but are also examined through a global lens together with the others, creating a balancing exercise which would lead to the findings of confusion, or otherwise.

Apart from the assessment of several factors and elements, 'likelihood of confusion' is also determined by taking into consideration reasonable consumers, whose perception of confusion or otherwise will be detrimental to the opposition decision.

In conclusion, it is clear that while no specific rules as to the interpretation of 'likelihood of confusion' are found, common sense and consistency have prevailed in EU case law in recent years. This has helped opponents and applicants have a better understanding of how the law should be interpreted. The principles established by the European Court of Justice, have served as a good foundation for the assessment and analysis of 'likelihood of confusion', which in turn has increased coherence levels in EUIPO decisions.


1 Council Regulation (EC) No 207/2009 on the European Union Trade Mark

2 Case C-251/95 Sabel vs Puma [11.11.1997] European Court of Justice

3 Case R 0994/2009-4 Ventus-Česko s.r.o. vs Vendus Sales & Communications Group GmbH [15.07.2010] EUIPO Board of Appeal

4 Case T- 172/04 Telefónica, S.A vs OHIM [27.09.2006] General Court

5 Case T‑238/10 Stephanie Scatizza vs OHIM [20.10.11] General Court

6 'Guidelines for Examination of European Trade Marks' Part C, Opposition, Section 2, Identity and Likelihood of Confusion, Chapter 4, Sub section 3.4.1, Page 27 [Version 1.0, 01.02.2017]

7 Opposition B 1 175 769 Paul Fitoussi vs Jens Håkansson AB [11.03.2009] Opposition Division

8 Case T- 1148/08 Antonino Aiello vs OHIM [12.07.2012] General Court

9 Case T-81/03, T-82/03 and T-103/03 Mast-Jägermeister AG VS OHIM [14.12.06] General Court

12 Case C-342/97 Lloyd Schufabrik & Co GmbH vs Klijsen Handel BV [22.06.1999] European Court of Justice

11 Opposition R 0410/2010-1 Lidl Stiftung & Co. KG vs Nikhil Joshi [19.10.2010] Opposition Division

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions