The Neutralisation Doctrine in EU Trade Mark Law: A Plea for Its Abolishment

This article focuses on the neutralisation doctrine established by the Court of Justice of the European Union in its Picasso/Picaro ruling. This doctrine stipulates that visual and/or phonetic similarity of conflicting signs can be neutralised by a conceptual difference between the signs if one of those signs has a clear and specific meaning which can be grasped immediately by the public. We trace the origin of the neutralisation doctrine as well as the manner in which the neutralisation doctrine has developed over the years. We then assess the position of the neutralisation doctrine in the broader phased assessment of similarity established by the Court of Justice of the European Union in EUIPO/Equivalenza Manufactory. We express our objections against the neutralisation doctrine and argue for its abolishment. In our view, the test of whether the public perceives a sign as referring to a trade mark which identifies goods or services or as a word or famous person is in essence a test of the distinctive character of that sign. In our concluding remarks, we argue once more for the abolishment of the neutralisation doctrine and provide some practical guidance to minimise its effects as long as it remains established law.