Likelihood of confusion and autonomous distinctive position: an important reminder from the Cour de cassation

In line with the CJEU's established case law, the assessment of likelihood of confusion must be global, based on the overall impression produced by the signs on the relevant public.

However, an earlier trademark may retain an autonomous distinctive position in a later composite sign that reproduces it, thereby exposing the public to a risk of confusion or to believe in a possible economic link between the companies involved.

In this case, the Paris Court of Appeal, hearing the appeal against an INPI opposition decision, had ruled that the mere presence of the common term "Circus" between the signs "Circus" and "Circus Baobab" was not sufficient to characterize a likelihood of confusion, on the grounds that the contested sign "Circus Baobab" was clearly distinguishable by its structure, its final sound and its own conceptual aspect. The additional term "Baobab" helps to create a different perception in the eyes of the public.

However, the Cour de cassation rejected this simplified approach, pointing outthat the overall assessment of the likelihood of confusion does not exclude examination of the independent distinctive position of an element of the earlier trademark used in a later sign.

It criticizes the lower courts for failing to investigate whether the term "Circus", common to the signs in question, remained immediately perceptible as an autonomous element in the expression "Circus Baobab", such autonomy being likely to lead the public to attribute the same origin to the products in question or to believe in the existence of an economic link between the companies in question. On this ground, the French Supreme Court overturned the appeal decision, for lack of legal basis.