Counteraction principle

The counteraction principle or counteraction theory is a legal principle which relates to the use of intellectual property where two marks are phonetically similar and where such a situation could lead to public confusion between brands.

Relevant issues

Holders of

trademarks

are able to contest the registration of similar trademarks on multiple grounds; one of which is public confusion. On the basis of public confusion, the counteraction principle (in essence) will not hinder companies using trademarks which are similar to those of famous marks. This is because most famous marks are likely to be easily identifiable, and therefore not likely to lead to confusion from the general public.

Relevant cases

Ruiz-Picasso and Others v OHIM

In Ruiz-Picasso and Others v OHIM [2006] ECR I-643,

PSA Peugeot Citroën to use the trademark Picaro on one its models. The estate argued that the trademark name Picaro was too similar to Picasso and would cause public confusion. After being defeated in lower European courts, the appeal was dismissed in the European Court of Justice.^[2]

Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S

In Les Éditions Albert René Sàrl v Office for Harmonisation in the Internal Market, Orange A/S,

Madrid System. However, for all other classes the appeal was dismissed, as the General Court (European Union) concluded that there should be no confusion over such a popular character.^[4]

References

^ "InfoCuria". Curia.europa.eu. 2006-01-12. Retrieved 2012-10-13.
^ Rennie, David (13 January 2006). "A Picaro is no Picasso, and that's final". The Telegraph. Retrieved 2 October 2012.
^ "InfoCuria". Curia.europa.eu. 2008-12-18. Retrieved 2012-10-13.
^ "The IPKat: Obelix too famous to be confused with a mobile phone service". Ipkitten.blogspot.co.uk. 2008-12-29. Retrieved 2012-10-13.

External links

Ipkitten.blogspot.co.uk

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[1] "InfoCuria". Curia.europa.eu. 2006-01-12. Retrieved 2012-10-13.

[2] Rennie, David (13 January 2006). "A Picaro is no Picasso, and that's final". The Telegraph. Retrieved 2 October 2012.

[3] "InfoCuria". Curia.europa.eu. 2008-12-18. Retrieved 2012-10-13.

[4] "The IPKat: Obelix too famous to be confused with a mobile phone service". Ipkitten.blogspot.co.uk. 2008-12-29. Retrieved 2012-10-13.

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