Ilanah Fhima and Dev S. Gangjee, The Confusion Test in European Trade Mark Law, Oxford: Oxford University Press, 2019, 278 pp, hb £125.00.
| Date | 01 September 2020 |
| Author | Paul Torremans |
| Published date | 01 September 2020 |
| DOI | http://doi.org/10.1111/1468-2230.12542 |
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Ilanah Fhima and Dev S. Gangjee,The Confusion Test in European Trade
Mark Law, Oxford: Oxford University Press, 2019, 278 pp, hb £125.00.
Monographs on key aspects of trade mark law are a rare breed. The arrival
of Ilanah Fhima and Dev Gangjee’s full-length study of the confusion test
in European trade mark law is therefore a moment of joy for all trade mark
experts, promising detailed, penetrating analysis by recognised experts in the
field. Moreover, the confusion test presents one of the thorniest and most
complex issues in European trade mark law. Having started with such high
expectations, does the book actually deliver?
There are eight chapters in total, starting with an introduction titled ‘The
Likelihood of Confusion’. It is wise not to launch into a detailed analysis of
the components of the confusion test without spending some time and effort
analysing the central concept. Clarity is essential, since ‘confusion’ arises in two
slightly different contexts. For most of us, ‘confusion’ – as legal test or concept
– is immediately and inextricably linked to trade mark infringement, but in a
second sense it also pertains to the relative grounds for refusing to register a trade
mark. These two distinct causes of action imply nuanced applications of the
concept of confusion. This introductory chapter appropriately distinguishes
between them, framing the analysis within the broader context of general
rationales for trade mark protection and some consideration of what the future
may bring for the concept of confusion.
Having properly calibrated the conceptual microscope, analysis turns to the
individual components of the confusion test in European trade mark law.
The first component is that of similarity. The confusion test is engaged when
either the sign that is applied for or that is allegedly infringing is similar to
the registered trade mark or when the goods or services are similar. Chapter 2
logically turns to the similarity of marks. The fir st task is to distinguish between
aural, visual and conceptual similarity and to consider which dimension is
most important. Visual similarity between the sign and the mark, aural or
phonetic similarity and, finally, conceptual similarity are addressed in turn,
exemplifying one of the book’s major strengths. All too often scholarly articles
and (text-)books limit themselves to syntheses illustrated with just one or two
examples. By contrast, these authors have undertaken exhaustive analysis of the
seemingly endless EU Court of Justice and the General Court jurisprudence,
augmented where needed by relevant UK cases. Rather than highlighting a
couple of examples, their analysis works its way through dozens of interesting
illustrations of the various points and concepts that the courts have relied on
to decide whether there is visual, aural or conceptual similarity between the
sign and the mark. As Ilanah Fhima intimates in her acknowledgments, the
publisher must have been concerned by the sheer volume of material. But
there is tangible value for the reader in being taken through a succession of
real examples in a structured way in coming to understand and appreciate
the approaches developed by the courts. The minefield of confusing similarity
between the sign and the mark is defused and the overall jurisprudential picture
becomes a lot clearer. To give just a couple of indications, in relation to aural
C2020 The Author. The Modern Law Review published by John Wiley& Sons Ltd on behalf of Moder n Law ReviewLimited.
(2020) 83(5) MLR 1128–1131
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