The counteraction principle or counteraction theory is a legal principle which relates to the use of

intellectual property Intellectual property (IP) is a category of property that includes intangible creations of the human intellect. There are many types of intellectual property, and some countries recognize more than others. The best-known types are patents, c ...

where two marks are phonetically similar and where such a situation could lead to public confusion between brands.

Relevant issues

Holders of

trademarks A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. ...

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

006 Alec Trevelyan (006) is a fictional character and the main antagonist in the 1995 James Bond film ''GoldenEye'', the first film to feature actor Pierce Brosnan as Bond. Trevelyan is portrayed by actor Sean Bean. The likeness of Bean as Alec Tre ...

ECR I-643, the estate of

Pablo Picasso Pablo Ruiz Picasso (25 October 1881 – 8 April 1973) was a Spanish painter, sculptor, printmaker, ceramicist and theatre designer who spent most of his adult life in France. One of the most influential artists of the 20th century, he is ...

argued that

Daimler Chrysler The Mercedes-Benz Group AG (previously named Daimler-Benz, DaimlerChrysler and Daimler) is a German multinational automotive corporation headquartered in Stuttgart, Baden-Württemberg, Germany. It is one of the world's leading car manufacture ...

infringed upon the Picasso trademark when it licensed

PSA Peugeot Citroën The PSA Group (), legally known as Peugeot S.A. (Peugeot Société Anonyme, trading as Groupe PSA; formerly known as PSA Peugeot Citroën from 1991 to 2016) was a French multinational automotive manufacturing company which produced automobiles ...

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 The European Court of Justice (ECJ, french: Cour de Justice européenne), formally just the Court of Justice, is the supreme court of the European Union in matters of European Union law. As a part of the Court of Justice of the European Uni ...

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, the applicants claimed that

Community Trade Mark A European Union trade mark or EU trade mark (abbreviated EUTM; named ''Community Trade Mark'' (''CTM'') until 23 March 2016) is a trade mark which is pending registration or has been registered in the European Union as a whole (rather than on a na ...

protection for Mobilix would risk confusing consumers on the basis that the trademarks were phonetically similar. OHIM accepted the registration of the mark on the basis that everyone knew the fictional character

Obelix Obelix (; french: Obélix) is a cartoon character in the French comic book series ''Asterix''. He works as a menhir sculptor and deliveryman, and is Asterix's best friend. Obelix is noted for his obesity, the menhirs he carries around on his b ...

. The OHIM Board of Appeal allowed for opposition by the Paris-based publisher of the Obelix character for classes 9 and 35 of the Madrid System. However, for all other classes the appeal was dismissed, as the

General Court (European Union) The General Court, informally known as the European General Court (EGC), is a constituent court of the Court of Justice of the European Union. It hears actions taken against the institutions of the European Union by individuals and member stat ...

concluded that there should be no confusion over such a popular character.

References

External links