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, co ...

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 form of intellectual property that consists of a word, phrase, symbol, design, or a combination that identifies a product or service from a particular source and distinguishes it from ot ...

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 is a fictional character who is the main antagonist in the 1995 James Bond film ''GoldenEye,'' portrayed by actor Sean Bean. Bean's likeness was also used as the model for Alec Trevelyan in the 1997 video game '' GoldenEye 007' ...

ECR I-643, the estate of

Pablo Picasso Pablo Diego José Francisco de Paula Juan Nepomuceno María de los Remedios Cipriano de la Santísima Trinidad Ruiz y Picasso (25 October 1881 – 8 April 1973) was a Spanish painter, sculptor, printmaker, Ceramic art, ceramicist, and Scenic ...

argued that Daimler Chrysler infringed upon the Picasso trademark when it licensed

PSA Peugeot Citroën Peugeot S.A., trading as Groupe PSA () (formerly PSA Peugeot Citroën from 1991 to 2016) was a French multinational automotive manufacturing company which produced automobiles and motorcycles under the Peugeot, Citroën, DS, Opel and Vauxhal ...

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), officially 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 Union, it is tasked with interpreting ...

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

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