The matter at hand

In opposition proceedings before the Swedish trade mark office, the Patent- och registreringsverket (the ‘PRV’), directed against the application for registration of the sign ROSLAGSÖL, the opponent invoked a registration for a figurative trade mark consisting of the word elements ‘Roslags Punsch’ written in a slanted curly hand. The registration was accompanied by a disclaimer stating that the ‘registration does not give an exclusive right over the word ‘RoslagsPunsch’’. The disclaimer had been added at the request of the PRV as a condition for registration of the mark, because the term ‘Roslags’ refers to a region in Sweden and the term ‘Punsch’ describes one of the goods covered by the registration, namely punch. Under Swedish trade mark law, such disclaimer excluding an element of a trade mark registration from protection is possible if a trade mark contains an element which cannot be registered by itself and there is a clear risk that registration may give rise to uncertainty as to the scope of the exclusive right.

The PRV awarded the opposition on the basis of likelihood of confusion, considering that the goods were identical or similar (alcoholic drinks vs non-alcoholic beverages and beers) and both marks started with the word element ‘Roslags’ which was considered a dominant element in both signs. This decision was overturned in appeal, after which the PRV appealed to the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm Sweden). This court referred questions to the ECJ, asking whether the Swedish provisions regarding disclaimers are compatible with Article 4(1)(b) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks if the effect thereof “would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the analysis of the likelihood of confusion, or to attribute to such an element, in advance and permanently, limited importance in that analysis.”

The judgment of the ECJ

The ECJ holds that Member States in principle remain free to lay down provisions in their national law allowing disclaimers to be recorded at the time of registration, provided however that the disclaimers do not impair the effectiveness of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, in particular the protection given to proprietors of earlier trade mark against the registration of trade marks liable to create a likelihood of confusion on the part of consumers or end users (paragraph 37). In addition, “such disclaimers must not have the effect of calling in question the objectives pursued by [Trade Mark] Directive 2008/95, referred to in recitals 8 and 10 of the directive, namely to ensure that the conditions for obtaining a registered trade mark are, in general, identical in all Member States, and to guarantee equal protection of trade marks under the legal systems of all the Member States” (paragraph 38).

After giving a summary of settled case law regarding the assessment of the likelihood of confusion, the ECJ rules that “a disclaimer provided for by national law whose effect was to exclude an element of a complex trade mark, mentioned in the disclaimer, from the analysis of the relevant factors for establishing the existence of a likelihood of confusion within the meaning of Article 4(1)(b) of [Trade Mark] Directive 2008/95 because that element is descriptive or not distinctive would not be compatible with the requirements of that provision” (paragraph 46). The ECJ notes, in particular, that the distinctive character of a trade mark “must be assessed in relation to the sign as a whole, and hence in the light of all its components, so that the exclusion of one of the elements of the earlier trade mark from the analysis of the distinctiveness of that mark may have an effect on the extent of protection of that mark” (paragraph 51).

The ECJ continues that the same applies to a disclaimer provided for in national law whose effect were to attribute, in advance and permanently, limited importance to an element of a complex trade mark in the analysis of the likelihood of confusion. Although the ECJ recognizes that “descriptive, non-distinctive or weakly distinctive elements of a complex trade mark (…) generally have less weight in the analysis of the similarity between the signs than the elements of greater distinctiveness” (paragraph 53), it is stressed that the “individual assessment of each sign must be made in the light of the particular circumstances of the case and cannot be regarded as being subject to general presumptions” (paragraph 54). Moreover, while the fact that a sign coincides with an earlier trade mark in an element that is weakly distinctive or descriptive will admittedly not often lead to a finding that a likelihood of confusion exists, “a finding that a likelihood of confusion exists cannot, because of the interdependence of the relevant factors, be ruled out in advance and in any event” (paragraph 55).

The ECJ rules that this interpretation cannot be called into question by the fact that the element mentioned in the disclaimer at issue in the main proceedings is, under national law and because of its descriptive character, excluded from the protection granted to a registered trade mark. In this regard, the ECJ emphasizes that a finding of a likelihood of confusion leads solely to the protection of “a certain combination of elements”, not to the protection of a descriptive element which forms part of that combination ‘as such’. “Consequently, the proprietor of a complex trade mark cannot in any event claim an exclusive right solely in one element of the trade mark, whether or not it is referred to in a disclaimer provided for by national law” (paragraph 58).

The ECJ concludes that “Article 4(1)(b) of [Trade Mark] Directive 2008/95 must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis” (paragraph 62).