Alex v Alex: Why limitations in trademark law aren't child's play
As a general rule, the scope of protection of a trademark is limited to the goods and services for which it has been registered. This means that a trademark owner can only enforce a right against trademarks used for similar goods and services. A recent dispute over the trade name Alex illustrates the principle.
The case centred on two German trademarks 'Alex'; the first (a national right) registered for use on sports articles, and the second (a EU TM) for children’s toys.
Is there a likelihood of confusion?
Under trademark law, the proprietor of an earlier trademark can oppose the use of a similar trademark for similar goods or services if is likely that the marks at issue will be confused with each other by the relevant consumer.
To establish whether likelihood of confusion exists, the examiner will assess visual, phonetic and conceptual similarity together with the level of similarity of the goods and services. If similarity between the trademarks and between the goods and services is established, confusion is deemed to be likely and, the proprietor of the earlier trademark right will be able to act upon the use of the younger trademark.
However, if there is similarity between the trademarks, but no similarity between the goods and services, the proprietor of the earlier trademark will not be able to oppose the use of the younger trademark (unless the owner of the earlier mark is able to establish reputation). It is for this reason that that companies are able to use the same or similar trademarks for non-similar goods and services; for example, Ajax the football club and Ajax the household cleaning product.
The case of two Alexes
In the case of Alex v Alex, it is evident that the trademarks are similar (even identical), so the question is whether or not there is similarity between the goods and services. In other words, can the trademark proprietor of two German trademarks (a word mark and a figurative mark) registered for sporting articles oppose the use of the EU TM on children’s toys. Both EUIPO’s Board of Appeal and the CJEU’s General Court decided that it could not last month, with the latter ruling that there is no similarity between the goods and services at issue.
Frouke Hekker works in Novagraaf’s Competence Centre. She is based in Amsterdam