The Thomson Life Doctrine: EUIPO Boards of Appeal Take Stock of Twenty Years of Case Law

‍Background: What Is the Thomson Life Doctrine?

The doctrine takes its name from the CJEU’s 2005 judgment in Thomson Life (C-120/04). The Court had to decide whether there could be a likelihood of confusion where a later sign combines a company name with another party’s earlier trade mark – even where that earlier mark does not dominate the overall impression of the later sign.

The CJEU’s answer: yes, exceptionally. Signs must generally be compared as a whole, without artificial dissection. But where an earlier mark is reproduced in a complex later sign and retains an independent distinctive role there – without needing to dominate it – a likelihood of confusion cannot be ruled out, provided the earlier mark has at least a normal degree of distinctiveness.

Finally, although the question referred for a preliminary ruling to the CJEU concerned a contested sign composed of the juxtaposition of the applicant’s well-known company name and a registered trade mark belonging to another party, the Court clarified that the non-overlapping element incorporated within the complex sign did not necessarily have to be a well-known company name but could also be, for example, a well-known trade mark or a widely recognised commercial name

Twenty years on, the EUIPO report finds that this apparently simple rule has produced a surprising amount of terminological confusion – the phrase “independent distinctive role” is often used by the General Court and the Boards to mean entirely different things, not all of which actually apply the Thomson Life doctrine at all.

Three Recurring Questions From the Case Law

1. How closely must the earlier mark be reproduced?

The doctrine generally requires the earlier mark to be identically or near-identically contained in the contested sign. Minor spelling variations may still qualify (e.g. Doughnuts/Doghnuts [C-519/12]), but the General Court has drawn the line where the difference is more substantial. In New Orleans Pelicans (T-112/17), the addition of a letter and a plural “s” was enough to take PELICANS outside the scope of the earlier mark PELIKAN – a “certain resemblance” was not sufficient. Likewise, in NIVEA SKIN-IDENTICAL Q10 (T-665/22), the GC confirmed that the Thomson Life doctrine does not apply when the earlier mark has been ‘modified’ in the contested sign referring to the following signs SKINIDENT vs. NIVEA SKIN-IDENTICAL Q10.

2. How distinctive must the shared element be?

As a rule, only elements of at least average distinctiveness can retain an independent role. In Selezione Oro Barilla (C-245/06 P), the CJEU confirmed that the weak element “ORO” (the Italian term for “gold”) could not trigger the doctrine. Weakly distinctive elements can exceptionally still qualify, but only if they otherwise stand out – for instance through their position or size in the sign.

3. Does the element keep its own identity, or does it merge into something new?

This is often the most fact-sensitive question. In SPA Therapy (T-109/07), “SPA” retained its independent role because “SPA THERAPY” was simply the sum of two distinct words. By contrast, in FAIRWILD (T-247/11) the Court also found an independent role for “WILD”, since the combined term had no separate meaning of its own that would absorb it. Conversely, where the combination creates a genuinely new conceptual unit (i.e. where it forms a unit with having a different meaning) – as with “MUSIKISS” (T-421/18) swallowing the earlier mark “KISS” – the doctrine does not apply.

What This Means in Practice

• Do not rely on the doctrine as a shortcut. Even where an earlier mark is reproduced and retains an independent role, this only feeds into – and does not replace – the global assessment of likelihood of confusion. Reasoning is always required.
• Build the identity argument first. Since near-identical reproduction is a threshold requirement, a side-by-side comparison of the signs, letter by letter, should be the starting point of any Thomson Life argument – on either side of a dispute.
• Distinctiveness evidence remains decisive. Where the shared element is weak, be prepared to show why it nonetheless stands out (position, size, colour, well-known character) – general assertions of “independent role” will not suffice.
• Watch the conceptual unit. Arguing that a combined sign forms – or does not form – a new, self-contained meaning is often the crux of the case, and is highly fact-specific.

We Can Help!‍

Composite and add-on signs are a constant feature of opposition and cancellation practice, and the Thomson Life doctrine remains one of the more nuanced tools available to earlier rights-holders facing such marks – as well as one of the more exploitable ones for applicants defending a new composite sign. Whether you are asserting an earlier mark against a composite sign or defending a new registration that incorporates a third party’s mark, our trade mark team is happy to assess your position in light of this case law.