Och-Ziff who owned the OCH and OCH-ZIFF Community trademarks, sued Och Capital for using OCH themselves for the same financial services. Arnold J found the marks were infringed and that there had been some passing off too. A counterclaim for a declaration of “we’re only using our own name” both failed. The exciting bit of this very long judgment comes at paragraph 79 to 101, where the judge considers the doctrine of initial interest confusion, which Och-Ziff pleaded. The initial interest confusion is an expression that derives from US trade mark law.
After a masterly and pleasurably intelligible explanation of the doctrine, illustrated by examples and precedents drawn from US case law, the judge continued. What then is the status of initial interest confusion in European trade mark law? There is a definition given of “initial interest confusion” as confusion on the part of the public as to the trade origin of the goods or services in relation to which the impugned sign has been used arising from use of the sign prior to purchase of those goods or services, and in particular confusion arising from use of the sign in advertising or promotional materials.
After a masterly and pleasurably intelligible explanation of the doctrine, illustrated by cases decided under European trade mark, paying particular attention to Court of Justice rulings, the judge continued. It again seems clear from this that there can be a likelihood of confusion within the meaning of article 9(1) (b) of the Community Trade Mark Regulation at the point when a consumer at the point when a consumer views an advertisement, whether or not the advertisement leads to a sale and whether or not the consumer remains confused at the time of any such sale.