The Many Faces of the Average Consumer: Is It Really So Difficult to Assess Whether Two Stripes Are Similar to Three?

Abstract

This article shows the necessity of including policy concerns, in particular the need to keep signs available for competitors, when assessing a likelihood of confusion. In the Adidas/Marca case, the CJEU ruled that the need to keep signs freely available for other economic operators cannot be a relevant factor in the infringement analysis. This is particularly problematic in relation to appealing signs such as stripe motifs. These signs not only serve as a source identifier, but also appeal to consumers and therefore give trademark owners an advantage over competitors on the market. In order to offer sufficient room for the concerns of trademark owners and competitors (and ultimately also consumers), it is essential to apply normative corrections not only in favour of trademark owners but also in favour of competitors. The current analysis of confusion in EU trademark law already contains a normative correction in favour of trademark owners. From an empirical perspective, the more distinctive the trademark, the less likely consumers are to be confused when confronted with a similar sign. The CJEU, however, assumes that consumers are more likely to be confused when confronted with signs that are similar to a highly distinctive trademark. In a trademark system where this normative correction is possible in favour of trademark owners, similar steps should be taken to give sufficient weight to the interests of competitors. In this light, this article concludes that the Adidas/Marca decision should be overruled.

The Procrustean fitting of trade marks under the requirements of clear and precise subject‐matter in the EU trade mark law—A case of position marks

“…Adidas's tendencies of enforcing their large set of stripe registrations across various industries has frequently raised concerns as amounting to practices that hindered the availability of stripe motifs to competitors who might need designs that conferred a sort of standardised sporty look to effectively compete. 63 An important follow-up on the interpretation of distinctiveness applied to position marks was brought by the case of Swedish trade marks related to the colouring of parts of vehicles used for transport services. Registration was initially refused and Stockholm Patents and Market Court of Appeal sought a referral to the CJEU (C-456/19…”

Fashion designs and brands: The role of the informed user and the average consumer

“…The favour of the court towards the protection of marks with reputation needs to be evaluated also for its effects on the ability of competing manufacturers who may also want to use stripe motifs as a decorative feature (Anemaet, 2020, p. 191, 198) and this reasoning needs to be added to the critical outcomes ensuing from an existing CJEU assumption that the more a mark is well known, the greater the likelihood of confusion. This assumption is ultimately a normative adjustment of the perception of trade marks by consumers.…”

“…This assumption is ultimately a normative adjustment of the perception of trade marks by consumers. There is strength in the contrary argument that actually a “trade mark that is well known to consumers is more likely to be remembered, and it is, therefore, less likely that consumers will have an 'imperfect recollection' when confronted with a similar trade mark” (Anemaet, 2020, p. 193; see also Weatherall, 2017, p. 75).…”

“…Consumers of everyday products who display an average level of attention are not necessarily the correct benchmark (Anemaet, 2020, p. 204). Looking at the way trainers have evolved as products in the fashion industry, it is undeniable that some of them may be more than just mass‐consumption goods, they can be expensive, and in some instances they are supplied in limited editions.…”