Peaceful coexistence of trademarks is always gladly claimed when it comes to infringement proceedings against older trademark rights in the EU. A glance at the case law shows: Opposition to the younger trademark and long duration of coexistence are important criteria for peaceful coexistence.
Peaceful coexistence of trademarks in the EU is closely linked to the risk of confusion between trademarks. Often it is only in the case of nullity proceedings or an opposition against a trademark that it is argued that there is a peaceful coexistence of the trademarks. But does peaceful coexistence per se rule out the danger of confusion?
A look at the case law shows that there is a clear legal line for peaceful coexistence.
When does a peaceful coexistence of two brands actually exist?
Peaceful coexistence is often claimed in trademark infringement proceedings, but when does a peaceful coexistence of two trademarks actually exist?
The European Court of Justice (ECJ) has recently made a fundamental statement on this issue. In the Kerrygold case, the ECJ considered the peaceful coexistence of the conflicting trademarks in the UK and Ireland as proven, since the Irish applicant and trademark owner of the Union trademark Kerrygold did not oppose the use of the national trademark Kerrymaid (national Spanish trademark) in these Member States.
On the other hand, however, even a long period of coexistence of marks does not automatically mean peaceful coexistence of marks, the CFI (European Court of First Instance) ruled in the Tropical case. The CFI added that a long period of time certainly does not allow the conclusion that there is no likelihood of confusion between the trademarks. In the Tropical case, the conflicting trademarks had even coexisted for 16 years.
At this point, one pauses in amazement, since it is firmly established in the case-law that, on the one hand, a coexistence of marks may lead to a reduction of the likelihood of confusion between those marks (Case C-498/07 P Aceites del Sur-Coosur v Koipe  ECR C-498/07 P, paragraph 82, and also in 2011, Budějovický Budvar, Case C-482/09  ECR C:2011:605, paragraphs 75 to 82). On the other hand, it is settled case-law that the duration of coexistence is an essential factor (2015, La Rioja Alta v OHIM – Aldi Einkauf (VIÑA ALBERDI), T-489/13, EU:T:2015:446).
How does this fit in with the 16 years of coexistence that were not taken into account as the main argument for likelihood of confusion in the Tropical case?
The CFI itself answered this question in its decision Tropical. According to the decision, it is decisive for peaceful coexistence that the coexistence of the two trademarks exists for so long that ultimately the perception of consumers can be influenced. The court decided that the obligation to prove that there is no danger of confusion lies with the applicant of the younger trademark.
Of course, any argument for an alleged peaceful coexistence requires in any case prior proof of the identity of the earlier mark with the mark in dispute. Likewise, the actual use of the earlier mark must be present in the relevant territory.
Peaceful coexistence and invalidity proceedings
It is not uncommon that peaceful coexistence of trademarks is assumed or at least claimed, but at the same time nullity proceedings are conducted against the disputed trademark. There is clear case law on this point: the existence of a dispute between the owners of the earlier marks precludes a finding of coexistence (ARTHUR AND FELICIE, cited in paragraph 15 above, EU: T:2005:420).
Even in the absence of actual proceedings, evidence that there were different conflicts between the marks in dispute can be used as an argument that the coexistence of the marks was not peaceful, the CFI held in the Castellblanch case (EU:T:2005:438).
Is the reverse conclusion therefore valid that no likelihood of confusion can be claimed if the earlier trademark owner has not filed an opposition against the registration of the younger trademark or if nullity proceedings are opened against this trademark? No, the ECJ ruled in the Tropical case (margin no. 84) that the absence of a likelihood of confusion cannot be deduced from this alone.
Coexistence in one part of the EU – no risk of confusion in the whole EU?
Is it possible to conclude from the peaceful coexistence in one EU member state that there is no danger of confusion in the other EU countries either?
There is clear case law on this question as well. The ECJ clearly denied this in its Kerrygold decision of 2018 – we reported. The court emphasized that the effect of a Union trademark applies throughout the EU. If the Union trademark owner wishes to invoke this right, it is expressly not necessary at all that the likelihood of confusion occurs throughout the Union. A likelihood of confusion may exist for one EU country or several Union member states, but always this does not apply to the entire EU, but must be determined for the individual nations.
The same is true for peaceful coexistence: even if two trademarks can be considered as peacefully coexisting in one part of the Union, there may still be a likelihood of confusion between these trademarks in another part of the Union.
In this ruling, the ECJ explicitly referred to the possibility for trademark owners of a Union trademark to prohibit third parties throughout the EU from using a similar or identical sign – provided that their Union trademark is known “in a substantial part of the Union”. This “substantial part of the Union” may even correspond to the territory of only one Member State, the court explained.
In this context, you are welcome to read our article Acquired distinctiveness: How much Europe is needed for proof?
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Judgements quoted in the text