National rules in trademark law which cover part of a compound trademark such as a word and figurative mark by means of a disclaimer are not permitted in proceedings for a likelihood of confusion. The ECJ ruled that an exclusive right to only one component of a composite mark cannot be asserted.
Trademark law in Sweden with option disclaimer
Proceedings were instituted in respect of that trade mark application in respect of a trade mark ‘ROSLAGSÖL’, for which registration was subsequently sought and which was refused because of the likelihood of confusion caused by the dominant prefix ‘Roslags’. The term ‘Roslags’ also refers to a region in Sweden. The applicant for the trade mark ‘ROSLAGSÖL’ filed an appeal against the refusal to register the mark, claiming that the part of a mark which had been excluded from protection by a disclaimer should, in principle, be regarded as devoid of distinctive character.
Opposition to the overall view of a composite mark
The Swedish Court of Appeal therefore wondered whether a national rule permitting the inclusion of a disclaimer could be classified as a “procedural rule” even though it had the effect of altering the criteria on which the overall assessment was based.
No, said the European Court of Justice (ECJ) in its judgement. Article 4(1)(b) of Directive 2008/95/EC must be interpreted as precluding national legislation which provides for a disclaimer – where that disclaimer excludes an element of a composite mark from the overall assessment of the existence of a likelihood of confusion.
Protection of the combination of components as a whole
A finding that there is a likelihood of confusion leads only to the protection of a particular combination of elements without protecting a descriptive element belonging to that combination as such, the ECJ held, referring to the case-law. Consequently, the proprietor of a composite mark cannot invoke an exclusive right over only one element of that mark, whether or not that element is covered by a disclaimer provided for by national law.
Although, in the overall assessment of the likelihood of confusion within the meaning of Article 4(1)(b) of Directive 2008/95/EC, only weakly distinctive elements rarely support and create a likelihood of confusion, no element can be excluded from that overall assessment.
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