Can “Cannon” be Confused with “Canon”?

Canon Kabushiki Kaisha vs Metro-Goldwyn-Meyer Inc. Case C-39/97

Before the Court of Justice of the European Communities in Luxembourg [Judgment 29 September 1998]

The distinctive character of a trademark, in particular its reputation, had to be taken into account in determining whether there was sufficient similarity between the goods and services covered by that and another proposed mark to give rise to the likelihood of confusion.

The Court of Justice of the European Communities so held, inter alia (among other things (Latin)), on a reference by the German Federal Court of Justice for a preliminary ruling under Article 177 of the EC Treaty re: Article 4(l)b of the Directive of 21 December 1988 relating to trademarks.

MGM applied in Germany for registration of the word trademark 'Cannon' to be used for video film cassettes and film production distribution and projection for cinemas and television.

Canon Kabushiki Kaisha opposed the application on the ground that it infringed its earlier world trademark 'Canon' registered in Germany in respect of, inter alia, still and motion picture cameras, and projectors, and television filming, recording, transmission, receiving and reproduction devices, including tape and disc devices.

In the course of the proceedings, it was held, inter alia, that the mark 'Canon' had a reputation, but no importance was to be attached to that fact in deciding whether the marks were relevantly similar.

Article 4(1) of Directive 89/104 provides:

'A trademark shall not be registered or, if registered, shall be liable to be declared invalid, if i because of its identity with or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a like-ilihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.'

In its judgment the Court of Justice held:

The first question was whether the distinctive character of the earlier mark, and in particular its reputation, were to be taken into account in determining the issue of similarity.

Furthermore, according to the case law of the Court, the more distinctive the earlier mark, the greater the risk of confusion: since protection of a trademark depended, in accordance with Article 4(l)b of the Directive, on there being a likelihood of confusion; marks with a highly distinctive character, either per se (in itself (Latin)) or because of the reputation they possessed on the market, enjoyed broader protection than marks with a less distinctive character.

It followed that, for the purposes of Article 4(l)b, registration of a trademark might have to be refused, despite a lesser degree of similarity between the goods and services covered, where the marks were very similar and the earlier mark, in particular its reputation, was highly distinctive.

The second question was whether there could be likelihood of confusion within the meaning of Article 4 (1) b where the public perception was that the goods or services had different places of origin. There was such of confusion where the public could be mistaken as to the origin of the goods or services.

The essential function of the trademark was to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from other which had another origin.

For the trademark to be able to fulfil its essential role in the system of undistorted competition which the Treaty sought to establish, it had to offer a guarantee that all the goods or services bearing it had originated under the control of a single undertaking which was responsible for their quality.

Accordingly, the risk that the public might believe that the goods or services in question came from the same undertaking or economically linked undertakings constituted a likelihood of confu­sion within the meaning of Article 4(l)b.

Consequently, in order to demonstrate that there was no likelihood of confusion, it was not sufficient to show simply that there was no likelihood of the public being confused as to the place of production of the goods or services.

On those grounds the Court of Justice ruled:

There could be likelihood of confusion within the meaning of Article 4(1)b even where the public perception was that the goods or services had different places of production. By contrast, there could be no such likelihood where it did not appear that the public could believe that goods or services came from the same undertaking or from economically linked undertakings.

Legal brief

In this case, the European Court of Justice ruled that the public could easily mistake Canon and Cannon as being the same company selling the same products and, therefore, did not allow Cannon to be registered as a legal brand name in Europe. Canon was the winner for having established its name and brand already in the market. In English law, where a trademark, label, logo or design is used to intentionally confuse the public into thinking that the product belongs to a well-known brand the crime is called 'passing off'.

Over to you

1. Have you ever bought something which you thought was a branded item, or a famous make, only to discover it was a fake? What did you do? Does having the 'real' thing matter?

2. Write a letter to your local Consumers' Association complaining that in your local market there are numerous watches on sale that seem to be a famous brand but turn out to be fakes.