Advocate General Jacobs gave his Opinion today in European Court of Justice Case C-120/04 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH.
Medion owned the German word mark LIFE, registered for electronic entertainment goods. Thomson a leading company in the electronic entertainment goods sector, used the designation THOMSON LIFE, in some cases as a simple word sign and in other cases as a word/figurative sign with the THOMSON element in different graphic size, colour or style. The Landgericht Düsseldorf dismissed Medion's trade mark infringement claim on the ground that there was no likelihood of confusion. Mefion appealed to the Oberlandesgericht, Düsseldorf, which stayed the proceedings and referred to the Court of Justice for a preliminary ruling as to whether there is a likelihood of confusion within the meaning of Article 5(1)(b) of Directive 89/104 where a composite word or word/figurative sign (here, THOMSON LIFE) comprises a company name followed by an earlier mark (LIFE) which consists of a single word with ‘normal distinctiveness’ and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role. The Advocate General has advised the ECJ to rule that
"In determining whether a composite word or word/figurative sign comprising a company name followed by an earlier mark which consists of a single word with ‘normal distinctiveness’ and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role therein is sufficiently similar to the earlier mark to give rise to a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b) of Directive 89/104, a national court must base its assessment on the overall impression given by each mark, bearing in mind, in particular, their distinctive and dominant components, the nature of the public concerned, the category of goods or services in question and the circumstances in which they are marketed".
In other words, the IPKat says, the ECJ is saying "just look at the respective marks and, on a global assessment, answer the question of likelihood of confusion yourself". Merpel too wonders why this case should have gone for a preliminary ruling. It's about time national courts stopped treating trade mark infringement as some abstruse metaphysical concept and just applied it robustly to the facts of the marketplace.