Introduction

Few branding tasks are more critical than searching. The interdependence of similarity of marks and goods under E.U. law, however, resists any hard and fast test for conflict, and lack of predictability remains a problem for practitioners and parties alike.

This issue's Snippets flag up the need for caution when clearing beauty care marks given the interplay with pharmaceuticals, based inter alia on their shared nature as creams, lotions and the like (Apotex Inc. v Michael Schill).  

However, the fact that ostensibly different goods may be used together can also tip the balance toward similarity, when other factors point opposite.

This was the outcome in Antonio Riera Farre v ICON IP, Inc., where OHIM found "ready-made textile garments" in Class 25 similar to "fitness and exercise equipment" in Class 28. In this case, OHIM was heavily influenced by the close similarity of the marks (ELEMENTS and FIT ELEMENTS) and by evidence that the opponent used its ELEMENTS clothing mark for sports wear, which was commonly worn when using fitness and exercise equipment. Taking all this into account, OHIM concluded that the "remote" similarity of goods was enough to create a likelihood of confusion.

This decision demonstrates the importance of evidence in borderline cases. Mere submissions might easily have led to a different outcome.

It also highlights the challenge of interpreting search results against the backdrop of examiner unpredictability and facts not necessarily known until after an adversary files its evidence. Notwithstanding that, though, cases like Farre and Apotex also show that, on the whole, OHIM applies an interdependent assessment that practitioners can use to considerable effect where similarity is asserted or challenged.

Many will know that OHIM is considering a possible database of similar goods and services, designed to make the test for similarity more transparent. The current unpredictability of outcome in proceedings is no doubt at least partly driving this. Nonetheless, the proposal has met with widespread concern because of its potential to strip the process of flexibility and the examiners of their ability to react to persuasive evidence that goes against established practice, but nonetheless demonstrates a link, or the lack of one.

Whether OHIM presses forward remains to be seen. For now, though, brand owners and advisors should continue to follow the game: much can be learned from the outcomes of cases involving others.