The Court of First Instance of the European Union has intervened on the issue concerning the proof of coexistence of marks on October 2, 2013 (TPICE T-285/12 The cartoon Network, Inc. v OHIM and another). The Court has clearly ruled that the applicant who avails himself from the coexistence of a mark should prove the absence of likelihood of confusion within the mind of relevant public.
On April 2, 2012 (R 699/2011-2), the Board of Appeal rightfully contended as regard to the Court, that the applicant has not proved the way the consumer has been confronted to the conflicting marks on the market. The elements of proof have not demonstrated any absence of confusion during the period the marks were commercialised.
The issue is hence to know how to prove the absence of likelihood of confusion between the marks. The coexistence of earlier marks on the market can in some circumstances eliminate the risk of confusion between two conflicting marks. This hypothesis requires the applicant to demonstrate the absence of likelihood of confusion between the earlier marks in the mind the relevant public provided that they are identical. However, the proof of coexistence of registrations and the use of the mark by the applicant is insufficient and not relevant for the Courts.
In short, the probability of proving the peaceful coexistence of trademarks is weak. Indeed, how to prove that confusion has not occurred during the commercialisation of the marks? The outlines of the evidence of trademarks’ coexistence still need to be defined. Therefore, it is of minimal relevance in a claim of likelihood of confusion before the OHIM. The ultimate decision in the matter is within the hand of OHIM.