INTELLECTUAL PROPERTY LAW - WORLDWIDE

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• Likelihood of confusion between goods and services

• 
  Dr. Oliver S. Hartmann    Premium Member   Group moderator

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  Likelihood of confusion between goods and services

  Dear Mr. Lambert (and group members),
  
  Could you provide me a precedent with citation under the Trade Mark Act, 1994 which clearly sets out that the comparison of goods and services is not limited to a comparison between goods and goods, on the one hand, and services and services, on the other hand, but that it is also possible to assume a likelihood of confusion between goods and services?
  
  The Indians courts tend to negate that statement which I think – applying the EU Canon-case – is wrong.
  
  Thank you!
  
  With best regards
  Oliver S. Hartmann
  
  • 22 Jul 2007, 8:12 pm
  Dr. Oliver S. Hartmann wrote: > Dear Mr. Lambert (and group members), > > Could you provide me a precedent with citation under the Trade Mark > Act, 1994 which clearly sets out that the comparison of goods and > services is not limited to a comparison between goods and goods, on > the one hand, and services and services, on the other hand, but that > it is also possible to assume a likelihood of confusion between goods > and services? > > The Indians courts tend to negate that statement which I think – > applying the EU Canon-case – is wrong. > > Thank you! > > With best regards > Oliver S. Hartmann
• 
  Jane Lambert    Group moderator

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  Re: Likelihood of confusion between goods and services

  I think the English courts and the IP Office try to follow as closely as possible the case law of the European Court of Justice in cases under s.5 (2) and s.10 (2) of the Trade Marks Act 1994 (the provisions that implement art 4 (1) (b) and 5 (1) (b) of Directive 89/104/EEC). If you look at any of the recent decisions of the Registrar on earlier mark oppositions and invalidity applications (which you can download from the IP Office website or indeed any of the decisions on infirngement (which you can download from BAILII) you will find a lengthy reference to the leading ECJ cases on the point.
  
  English trade mark law diveregd from Indian law in 1994 (and indeed from that of many other Commonwealth countries) when we replaced the Trade Marks Act 1938 which would have influenced their legislation with s statutue that was intended to implement the Trade Marks Directive.
  
  • 11 Apr 2008, 2:12 pm
  Jane Lambert wrote: > I think the English courts and the IP Office try to follow as closely > as possible the case law of the European Court of Justice in cases > under s.5 (2) and s.10 (2) of the Trade Marks Act 1994 (the > provisions that implement art 4 (1) (b) and 5 (1) (b) of Directive > 89/104/EEC). If you look at any of the recent decisions of the > Registrar on earlier mark oppositions and invalidity applications > (which you can download from the IP Office website or indeed any of > the decisions on infirngement (which you can download from BAILII) > you will find a lengthy reference to the leading ECJ cases on the > point. > > English trade mark law diveregd from Indian law in 1994 (and indeed > from that of many other Commonwealth countries) when we replaced the > Trade Marks Act 1938 which would have influenced their legislation > with s statutue that was intended to implement the Trade Marks > Directive.