Trademark confusion – 3 practical rules of thumb for non-experts

by | Nov 4, 2021 | General, Insights | 0 comments

In 2015 the General Court of the EU decided that trademark SKYPE could not be registered because there was a likelihood of confusion to prior trademark SKY. Even though SKY, the UK based telecommunications and broadcasting company and Skype, a messaging company owned by Microsoft are clearly in the same broader industry, it struck as odd to many people that the two brands could not be distinguished from each other. Similarity of trademarks is assessed from three different aspects. Phonetic (how the marks sound), visual (how the marks look) and conceptual (what the marks mean). While this approach is commonsensical, it gives very little practical tools to assess two trademarks. Here are three basic rules to help you assess the similarity between two trademarks. These are generalisations and do not cover every situation. #1 Similarity is broader than you think – small differences are not enough Those who are not trademark experts are often surprised that two trademarks can be considered similar even though they have clear differences. Most people can probably distinguish between SKY and SKYPE in real life. That doesn’t mean that there cannot be trademark confusion. The similarity of trademarks is assessed from the point of view of an average consumer, who is reasonably well-informed and observant, but who on the other hand does not get to compare the marks side by side and must rely on an imperfect recollection of the marks.  If you are planning to launch a trademark and think whether it is too similar to a particular prior trademark, you have the luxury of comparing them side by side. It is the same if you’re wondering why SKY and SKYPE are confusingly similar. When you are comparing two trademarks side by side it’s easy to see even small differences. If you had to revert to the question of the similarity of your trademark and a particular prior trademark a week later without being reminded what the prior mark was exactly, would you remember the prior trademark? Maybe you would rather just think that it was something similar to your trademark. That’s imperfect recollection. Tip: The difference of a couple of letters is usually not enough to make two trademarks sufficiently different. If you are wondering whether two trademarks are similar, it is likely that they are. #2 Forget real life experience – look at the documents In trademark opposition cases the comparison is made “on paper”. It is not relevant how the trademarks are used in real life and what the products and services that the trademark is really used for are. The comparison is made between the prior trademark as it is registered and the later trademark as it is applied. The way the trademarks are used or not used in real life is largely irrelevant in opposition cases.  It is often the case in trademark oppositions that the two companies operate in completely different industries and because of that there is no risk of confusion in real life. For example, if there are two similar trademarks covering “software” in class 9, they will be considered similar even if the first company makes security software for operating a nuclear power plant and the other company has a mobile app for sharing cat photos.  Tip: Examine the two trademarks as they are applied and registered, not how they are actually used. The context and way of use will be important in assessing whether there is an infringement, but usually not in opposition cases. #3 If trademarks share a common element, they are usually similar In most cases two trademarks are considered similar if they share a common identical or highly similar element. This is the case especially where the common element is distinctive (not descriptive or laudatory, like “Eco” or “Premium”). If the two trademarks share a common non-distinctive element (like the above examples “Eco” or “Premium”), they are usually not similar if they both contain distinctive elements that are clearly different from each other.  If the prior trademark is included in its entirety in your trademark (like SKY is included in SKYPE), in most cases the marks will be considered similar. If the common element is in the beginning of the mark, that further reinforces the similarity.  Tip – You cannot usually avoid similarity simply by adding another word or element to another trademark. Here are some examples of trademarks that were found similar: – PINK LADY / WILD PINK (common element PINK) – KAMIK / KIMIKA (same consonants and vowels, slightly different order) – NORMON / NORMOSANG (shared beginning NORMO) – MUNDIPHARMA / MULTIPHARMA (identical end, similar beginning) – WINGS / ASNA WINGS (prior mark included in the later mark) – MEDIALB / MEDIALBO (prior mark included in the later mark, only difference is the additional letter “o” in the later mark) – BIONECT / BIONECS (nearly identical, only the last letter is different) – HAPPY HOURS / HAPPY TIME (identical beginning, ending is conceptually similar as both refer to time) – RED BULL / BULLDOG (identical element BULL) Conclusion Assessing trademark similarity is difficult. The above rules of thumb do not cover all scenarios or cases, but they should at least give some idea of how similarity is assessed. Apart from those general principles, there are a lot of more technical rules and principles that are applicable in various situations. These three rules won’t make you an expert, but they should give you at least some general idea on how to think of the similarity of two trademarks.

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