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Likelihood of confusion: is your brand name too similar?

13-12-2016

Trademark watching is an important tool in the monitoring of registered marks and devices, helping companies to identify and act against infringement and misuse of trademarks in a timely manner; for example, by raising an opposition to a potentially infringing trademark application. As a result, conflicts between brand owners are commonplace. But, how do trademark examiners and the courts decide whether an infringement has taken place? Likelihood of confusion is an important legal standard in this regard, as two recent judgements by the General Court of the European Union make clear.

Likelihood of confusion relates to the possibility of the relevant public mistaking the origin of a product or service due to similarity between its brand name and that of another business. Whether this occurs will depend partly on the similarity of the goods/services in question; and how similar/identical the marks.

The overall impression of the brand
When assessing the degree of similarity between the marks, visual (the image of the brand/logo), aural (pronunciation/sound) and conceptual (conceptual understanding) similarity will be taken into account. The similarity of the products/services will also be assessed; for example, a trademark that is registered for 'alcoholic beverages' will (apart from acquired brand awareness) be less likely to infringe a trademark registered for 'transport', as the respective products sit in totally different industry areas. In contrast, ‘alcohol’ and ‘tobacco’ are arguably more closely related to one another.

Word marks
The recent action brought by the owner of the ‘Canyon’ trademark against an application to register the trademark ‘Clover Canyon’ illustrates the process taken for word marks. Both marks cover registrations for the same goods (clothing) and, in assessing the overall impression, the EU General Court found the marks to be visually, aurally and conceptually similar due to the word 'canyon'. Although, the Court noted that consumers normally attach greater importance to the first part of a word  mark, it found that the inclusion of the word 'Clover' was not enough to overcome the likelihood of confusion in this instance.

Figurative marks
The second case related to possible confusion between the figurative marks of Monster Energy and HotoGo  in the drinks sector, both of which feature three wavy vertical lines. Here, the EU General Court found there to be no visual similarity between the marks, as the lines in the earlier trademark for Monster Energy logo are sharp and pointed, whereas those of HotoGo are smoother and soft. Aural similarity did not apply in the case as the marks in question were logos only, while conceptual similarity was not found as the lines in the Monster Energy brand relate to the letter 'M' while those of HotoGo refer to heat/hot drinks. Likelihood of confusion was therefore not found in this case.

How can you avoid registering a potentially conflicting mark?
Trademark searching provides a quick and simple means to investigate the availability of your chosen brand and trade names in your industry and countries of business.

In this internet age where ‘free’ information is at everyone's fingertips 24/7, it may be tempting to use an online search engine, such as Google, to conclude whether a trademark already ‘exists’. However, such an online search will not identify those marks that have already been registered, but not yet launched into a marketplace – or at least not yet in such a way that it comes up highly ranked in an online search. Only a detailed trademark search in official or purpose-built databases will be able to identify such potential conflicts.

For more on trademark searching or specific advice on your chosen trademark, please speak to your Novagraaf consultant or contact us.

Dominique Nijssen works in Novagraaf’s Competence Centre. She is based in Amsterdam