Under EU and Maltese trademark law, the family of marks doctrine is best understood as a jurisprudential development that falls within the broader assessment of the likelihood of confusion, including the likelihood of association. It is not expressly codified as a standalone doctrine in either the European Trade Mark Regulation or Malta’s Trademarks Act; rather, both instruments provide the underlying relative ground for refusal where a later mark is liable to cause confusion with an earlier mark.
Pragmatically, the doctrine reflects the commercial reality that brands are often built through structured portfolios rather than isolated signs. Where an undertaking consistently uses a series of related marks, the common element may acquire a level of significance as a ‘badge’ of origin. A later mark following the same pattern may therefore cause confusion, not because it is necessarily similar to one earlier mark in isolation, but because consumers may perceive it as a further member of the same series.
In Il Ponte Finanziaria v OHIM (Bainbridge), the Court of Justice (the “Court”) confirmed the notion that confusion may arise through association with a family of marks rather than through comparison with a single earlier mark alone. As such, in Bainbridge may be understood as establishing the following cumulative requirements:
1. The existence of a genuine family of marks which requires
2. The contested mark must be capable of being perceived as belonging to that same family or series.
3. The risk of confusion must therefore arise from the possibility that consumers may believe that the contested mark is another variant within the same commercial family and consequently originates from the same undertaking or, from economically linked undertakings.
The Court also made clear that mere registration of several marks sharing a common element is insufficient. The family must exist in the market, not merely on the register.
A family of marks depends on a consistent structure and must share characteristics capable of creating a coherent brand identity, such as a recurring word element, prefix, suffix, visual layout, or other presentation feature.
This consistency must not be coincidental as it must operate as the defining feature through which the relevant public understands the marks as variations of the same commercial series. The doctrine therefore protects structured branding systems, not general stylistic resemblance or a loose similarity between signs.
Distinctiveness of the Shared Element
The shared element must be distinctive enough to function as an indicator of origin and must appear in an identical, or at least highly similar, form across the series. Material variations in wording, stylisation, placement, or overall presentation may weaken the perception that the marks form part of a coherent unitary family.
The position of the shared element may also be relevant in this context. Where the element consistently appears at the beginning or end of the marks, consumers may be more likely to associate that placement with a particular undertaking.
Case C-317/10 P further illustrates that the assessment is holistic in nature. In this case, the Court considered it necessary to examine the structure of the marks, the position and distinctiveness of the common element, the perception of the relevant public, and the role of the remaining elements of the sign. The presence of a shared element is therefore not decisive by itself; it must be assessed within the overall composition of the marks.
Consumer Recognition
The proprietor must show that the relevant public has been exposed to the marks in such a way that it recognises them as a coherent series linked to one commercial source. To substantiate this factor, evidence may include advertising materials, catalogues, invoices, sales figures, website use, packaging, consistent presentation across products or services, and, where appropriate, consumer surveys.
Use alone may still be insufficient if it does not show that the shared element leads consumers back to the same source. This is particularly salient where only a small number of marks are relied upon, as consumers may be less likely to identify a true family from two marks alone, for example.
A family of marks can broaden protection for brand owners using a deliberate naming or branding architecture. However, the doctrine is incredibly evidence-heavy. For one to rely on it effectively, brand owners should use the shared element consistently, maintain a visible market presence for the series, and ultimately preserve evidence showing that consumers encounter the marks as part of one coherent family. Without that market recognition, a family of marks argument is unlikely to succeed.
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Authors: Dr J.J. Galea & Dr Mattea Pullicino
For guidance on protecting your trade mark portfolio, contact us at info@gtg.com.mt.