Trade mark coexistence and OHIM (and elsewhere): does it ever matter?

To what extent can one rely on the coexistence of marks on a registry to overcome a third-party citation or an opposition to a trade mark registration? Against that backdrop, this Kat (admittedly a bit of trade mark voyeur when considering OHIM jurisprudence from afar) wonders to what extent can we expect decisions matters before OHIM and the related courts to provide clear and workable guidelines on this issue. These questions arose in connection with this Kat’s perusal of the recent decision of the EU General Court (Seventh Chamber) given on October 2, 2013, in The Cartoon Network, Inc. v OHIM and another (Case T-285/12),here, which inter alia addressed the issue of coexistence.

As a matter of practice, and depending upon the jurisdiction, the thinking behind an inquiry into coexistence is that, if the two marks coexist in various jurisdictions, it should be an indication of an absence of a likelihood of confusion. To the extent that this approach is appropriate, how to establish it then becomes the question. These questions were addressed within the context of an opposition to the registration of the mark BOOMERANG. On this point, the Board of Appeal,in upholding the Opposition, ruled as follows:

24 In certain circumstances, the peaceful coexistence of the marks in dispute may be considered as one of the relevant factors in the assessment of the likelihood of confusion [citation omitted]. However, coexistence must be on the market and not just in the register. It is essential that the party presenting such argument adduces convincing evidence of the peaceful coexistence of the marks.

25 As regards the ‘peaceful coexistence’ requirement, it suffices to state that there is no evidence on file to demonstrate how the marks have been encountered by the consumer in the market place and in relation to which services. The evidence does not show that confusion did not occur during the time in which the trade marks were marketed.

26 Only under special circumstances may the Board consider evidence of the coexistence of the marks in the market. This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved. No such additional information exists in this case and the evidence of coexistence in the trade mark registers is irrelevant.

The General Court embraced this position and added the following observations:

55 It is sufficient to bear in mind that, admittedly, the possibility cannot be entirely precluded that, in certain cases, the coexistence of earlier marks on the market might reduce the likelihood of confusion between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the conflicting marks are identical [citations omitted].

56 It is clear from that case-law that, contrary to the applicant’s contention, it was required to demonstrate that the coexistence of the marks on which it relied was based on the absence of a likelihood of confusion on the part of the relevant public.

It seems to this Kat that the standard set to establish coexistence is not fully coherent and well-nigh impossible to meet. First, we are told what evidence is insufficient, namely mere coexistence of registrations and rudimentary evidence of use of the mark by the applicant. But what evidence would ever be sufficient to prove, as required in paragraph 25 of the decision of the Board of Appeal, the specific negative required, namely “that confusion did not occur during the time in which the trade marks were marketed.” This Kat has a good idea how to go about proving a negative when non-use is at issue. But he finds it difficult to understand what is needed to prove that no confusion had occurred.

Second, having regard to paragraph 26 of the decision of the Board of Appeal, this Kat does not really grasp what is meant by the assertion that “there may be different reasons as to why similar signs coexist”. When a registry chooses no longer to examine an application proactively on the basis of relative grounds, presumably it has turned that function over to private parties. As such, “the relevant marks coexist until they no longer coexist”, whatever the precise reason. To require, as the Board of Appeal apparently does, that the applicant needs to prove that the coexistence is due to a lack of confusion, as opposed to some other reason, seems to this Kat to expect more than was intended when the matter of relative grounds of refusal was in effect privatized.

Third, this point is sharpened by the statement of the Court in paragraph 56 that the applicant ” was required to demonstrate that the coexistence of the marks on which it relied was based on the absence of a likelihood of confusion on the part of the relevant public.” This seems to suggest an absence of a likelihood of confusion is a prerequisite before the court should consider evidence regarding coexistence. But if I have established no likelihood of confusion, why do I need any more evidence? Coexistence is intended to support my claim of no likelihood of confusion, not to ratify it. Indeed, in paragraph 55, the Court states that “the coexistence of earlier marks on the market might reduce the likelihood of confusion.” This Kat cannot reconcile the two statements on the role that evidence of coexistence might play in connection with a claim of likelihood of confusion.

With all of this uncertainty, thought, two things stand out. First, the fact of coexistence seems
to be of minuscule relevance, if at all, in countering a claim of likelihood of confusion in the OHIM context. Secondly, the likelihood of proving “relevant” coexistence in such circumstances is virtually nil.