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Trademark Registration – Likelihood of Confusion

Trademark Registration – Likelihood of Confusion

August 13, 2018

If you’ve ever received a notice from the trademark registry notifying you that someone else is applying to register a similar mark to yours, or that there is already a registered trade mark similar to the one you’re applying to register, then this post will be of interest.

Essentially, when anyone applies to register a trademark, no matter the country in which the application is made, the process involves the trademark registry to which the application to register a trademark is made, to conduct a search for conflicting marks as part of the official examination of the application.

The examination will be assessing whether the trademark is one that is capable of being registered, and whether there are any confusingly similar marks already on the register, among other things.

The approach registries take worldwide does differ in the details, albeit at high level they all adopt the same general approach. Particularly, noteworthy is the difference in approach between the US, UK and the EU if similarity is found to exist.

So the specific standard itself as to what is confusingly similar is defined by a vast body of law and varies from jurisdiction to jurisdiction, as does the position the registry will adopt if it decides that there is a likelihood of confusion.

Hypothetical Consumer
The essence of the likelihood of confusion test is whether consumers encountering one trademark are likely to be confused with a different trademark. This is not to say the consumer feels puzzled or befuddled or the like. Usually the consumer referenced in this body of law is a hypothetical consumer who would be completely unaware that two different companies are using the similar/identical mark. What’s more, the hypothetical purchaser is not expected to make detailed, side-by-side comparisons, or to have perfect recall.

Thus, trademark confusion means the hypothetical consumer is presumed to believe the two trademarks belong to the same source. And with likelihood being incorporated into this standard, a court or the Trademark Office must merely decide that the propensity for confusion is strong enough to warrant elimination of the newcomer’s use of the mark.

Thus many trademark infringement lawsuits proceed without a shred of evidence of any actual confusion. Of course, evidence of actual confusion would be very influential to the outcome.

Trademark Examination
So when an application is received, the trademark examiner conducts a search of its own trademark office’s records to assess whether there is a conflict between the mark being applied for and a mark that is either registered or pending in its trade mark registers. The principal factors considered in reaching this decision are

• the similarity of the marks and,
• the commercial relationship between the goods and services identified by the marks.

To find a conflict, it is not required that the marks and the goods or services be exactly the same. It’s often sufficient if the marks are similar and the goods and or services are related such that consumers would mistakenly believe they come from the same source.

A similarity in sound, appearance, or meaning may often be deemed sufficient to support a finding of likelihood of confusion in the USA, UK, EU and many other registries.

Example of What Similarity Looks Like
In the US the USPTO will not allow another trade mark that’s similar to be added to the registers. On the USPTO website there are a range of examples of marks that would be considered similar by a USPTO examiner.

Note that names that sound the same, albeit they may be spelt differently are deemed similar. Also, where two words look similar then they will be regarded as conflicting even though one may just be a word on its own, whereas the other may be a stylised mark.

In the US where two marks have the same meaning because one uses a foreign language they are deemed similar – so LUPO and WOLF. Another surprising aspect of the US approach is that if two marks create an overall similar impression they will be deemed similar – so City Woman and City Girl are similar because they create a similar mental reaction.

More commonly, if two marks use a similar device mark they will be deemed similar even though one may contain a word and the other only the design.

However, a likelihood of confusion will exist only if the goods and services the marks will be used on are, in fact, related.

To decide whether there is relatedness, (what we might call a cross class conflict in the UK), between goods or services, it is sufficient that goods and services are related in such a manner that consumers might mistakenly assume they come from a common source. So, goods within the same category or class – such as Hats and Tshirts and pants, or Banking Services and Mortgage Lending services – would be a problem under US law. (Their laws require a very narrow specification of goods and services, so the applicant would have to list just the item of clothing it intends to sell or does sell under the mark).

Likelihood of Confusion Exists
When the examiner believes that a conflict exists between the applicant’s mark and a registered mark, he or she will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.

Therefore, in the USA it’s more critical to conduct a search for conflicting marks before filing an application, as the existence of a mark that is confusingly similar to yours and used with related goods and/or services may bar registration of your mark.

Many common law countries have the same approach. So, for example, in Australia it would be necessary to obtain consent from an existing trademark owner in order to secure registration if the trademark office raises such an objection, even where the two marks could in fact co-exist without confusion, and the existing registrant is willing to give consent.

The position in the UK and EU
The UK had the same approach but this changed as a result of its membership of the EU.

Now, in both the UK and EU the office does not prevent another trademark applicant from registering its mark, even if it’s exactly the same mark for the same goods and services. The onus is on the existing trademark holder to decide whether to object to the newcomer’s application. Where the trade mark office find a similarity between two marks, it will simply notify the existing trademark owner through its representatives, and then it’s up to you whether the applicant secures its trademark.

You are supposed to police your own trademark registration, by deciding whether any similar marks that others are applying to register should be allowed through to registration or not.

It is cheaper and simpler to stop a registration getting onto the registers than it is to apply to cancel it later. For one thing the other party may simply withdraw its application, or may abandon use of that brand due to the delay caused by your opposition to their application.

You don’t have to oppose though. If you don’t oppose but later decide that the registrant is a problem, for example, because there is actual confusion in the market, then you would be able to apply to cancel the registration.

We are receiving an increasing volume of search notifications from the UK and EUIPO offices, so even if clients opt not to have a watch service, their marks are in fact watched to some extent anyway. However, there are particular rules within each office as to which trademark registrants will be notified. For example, the UKIPO does not notify the holders of EU trademarks of a conflicting UK trademark application, so that registrations that do in fact conflict with existing marks that apply in the UK are getting through to registration.

The presence of a confusingly similar trademark is not desirable from anyone’s point of view so it is worth paying attention to the applications that are being filed by others. Often the similarity will not be a concern, but occasionally you might want to nip something in the bud sooner rather than leaving it to fester and grow into a more difficult, expensive dispute down the line.