Identity or confusing similarity as grounds for rejecting trademark registration
Trademark is an effective communication tool between the company and its potential clients. Having a unique trademark which can be remembered well is one of the key elements of company’s success.
To protect the trademark from being used by others one should register it. However, creativity may also have limits and sometimes the registration can be rejected on the basis that the trademark is identical to already registered one or can create a likelihood of confusion among the clients. As a result, an essential problem can arise - how to determine whether the trademarks are identical or not and how they can become a reason of confusion.
RA Cassation Court in its decisions mentioned a quite high threshold to answer the question. The Court stated that in order to determine that the trademark is confusingly identical to the other, following grounds should exist simultaneously:
1. The identity and similarity nature of the goods;
2. Confusing similarity of the marks,
3. The risk of confusion among the consumers.
Court also stated that in order to decide on similarity nature of goods, the following should be taken into consideration:
- type of the Good,
- specifications of production of the Good (technological),
- the field of usage,
- the terms of realization of the product (sphere and procedure of realization).
Thus, to summarize, if one doesn’t produce identical or similar product with the holder of the trademark, the next parts of the tests may not matter.
However, if the identity or similarity nature of goods is satisfied, how to determine whether the marks are confusingly similar or not?
According to the Point 103 of the Order of the Minister of Trade and Economic Development of RA No 85-N, as of 12.04.2005 "On Approval of the Order of Formulation, Presentation and Review of Application for Trademarks and Service Marks" the similarity between image and dimensions is determined by the following features:
2) By the presence or absence of the symmetry.
3) Semantic meaning.
4) Image and character of the image (naturally stylized caricature and etc.).
5) Combination of colors and shades
6) Coincidental images on the comparable marks and arrangements for each other,
7) By the nature of the matching of the signs.
8) One of the marks entering the other.
9) with a matching element (image) of the elements of the signs (images), which has a distinct meaning and on which the logic stress falls.
It can be noticed that, the variety of features to determine the similarity of the marks is very broad and most of them concern the visual similarity. The semantic meaning of the marks is an exception in this case. RA Court of Cassation in its decisions stated that, to consider the fact of similarity in this case, it is necessary to find a semantic similarity between two marks that can be performed in the following ways:
- by using a synonym of the protected trademark.
- by using translation of the protected trademark.
To conclude, semantic similarity mostly concerns the synonyms of the protected trademark and the translation.
But there is also the third part of the test-the risk of confusion among the clients. There is a risk of confusion when an imitation motivates the consumer to believe that the specific identified product is the same product of its former known manufacturer and which makes him or her choose not the product he is looking for. Moreover, the threshold for stating the fact of the confusion is low-it is enough to state the probability of confusion and not mandatory the "fact of confusion".
The confusion is mostly estimated based on visual sense and satisfaction of this part of the test may seem easier. However, one should not forget that 3 features of the test should exist simultaneously in order to get a rejection for registration based on the ground of identity.
Author: Anzhela Abrahamyan, Junior Associate
26/1 Vazgen Sargsyan str, Yerevan 0010, Armenia
Phone: +374 11 520510
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LEGELATA LLC, 2020