Putting confusion in context: the nature of the comparison in trade mark infringement

The role of context is generally underplayed in a registration-based system. Determination of confusion is confined to the information set out on the register, and any external matter promptly excluded from infringement assessment. Such an abstract assessment following a mark for mark comparison can be contrasted with the more factually-driven approach available in unfair competition. This comparison also unveils the possible methodological choices between an analysis framed as a formal reassurance of property rights and another centred on the perception of the consumer inhabiting the marketplace. Recently, the CJEU decisions in O2 Holdings and Specsavers drew attention to the role of context in determination of confusion and, furthermore, the effect of different notions of context on outcomes of infringement analysis. The European Court is seemingly leaning towards a contextual assessment calling for empirical evidence in infringement. The actual use of the trade mark by the claimant, the circumstances in which the sign is used by the defendant, consumer understandings and market practices are all factors taken into account in determination of confusion. This work seeks to examine the CJEU doctrinal developments of the notion of context and their effect on the previously established boundaries of the multifactor test for infringement applied by national courts taking UK law as a case study. I argue that while a paper-based approach still has a well-deserved place operating at the registration level, the manner in which infringement has been dealt with in adjudication needs rethinking; a paper-based approach to infringement focusing on the visual comparison of isolated marks is no longer able to account for a reality that has become increasingly complex. Rather, a methodology assimilating a broader notion of context to infringement, one working with pliable layers of factual review reflecting market reality and consumer understandings, could be a means of achieving balance in a system that is often criticised for overreaching itself.