The OHIM Office has a very useful set of guidelines (updated on 1 June 2012) for applying the test and links are supplied along the way. This guide should be accompanied by the trusty South African Law of Trade Marks - Webster & Page.
Examples of where this checklist, with slight variations, has been applied in judgements (June 2012) can be located here (UK) and here (OHIM - check decision under miscellaneous).
The checklist:
1. Comparison of the marks/signs concerned
This involves an analysis of whether the
marks concerned are similar a. visually, b.
phonetically or c. conceptually bearing in mind the marks viewed as a whole
and having regard to the distinctive and dominant components.
The conclusion reached here is not whether the marks are
confusingly similar just whether they are similar. If they are found to be
similar then it is useful to assess what degree of similarity they share eg a
high or low level of similarity. This aspect of the test has some important
nuances for countries where, for instance, there is diversity in language and
accents.
If
the marks are not similar that is the end of the enquiry. OHIM Guideline here.
2. Comparison of the goods/services concerned
This involves analysing:
1. The respective
uses of the respective goods or services;
2. The respective users
of the respective goods or services;
3. The physical
nature of the goods or acts of service;
4. The respective trade
channels through which the goods or services reach the market;
5. In the case of self-serve
consumer items, where in practice they are respectively found or likely to
be found in supermarkets and in particular whether they are, or are likely to
be, found on the same or different shelves;
6. The extent to which the respective goods or
services are competitive. This
enquiry may take into account how those in trade classify goods, for instance
whether market research companies, who of course act for industry, put the
goods or services in the same or different sectors.
If the
services/goods comparison finds that they are dissimilar the enquiry stops
there. OHIM Guideline here.
3. Strength of the
earlier mark
This involves
an analysis of the strength of the earlier mark relied on either because of its
inherent distinctive character or as a result of the use made of it. This
analysis should conclude that the more distinctive the earlier mark, the
greater the likelihood of confusion ie wider protection is given the stronger
trade marks. This also means that even where a trade mark is registered,
evidence of use of the trade mark should be considered to show that the mark is
a strong mark.
4. Nature of the
consumer
The average consumer is
deemed to be reasonable observant and circumspect but one who does not consider
the marks side-by-side and who suffers from a degree of imperfect recollection.
However, one must decide if the consumer/end user of the mark is in fact an
average consumer or, for example, a less sophisticated person or perhaps a more
discerning customer. These factors influence whether a likelihood of confusion
may occur. They are particularly important in a country, like RSA, which is so
diverse.
5. Other factors - global assessment
The global appreciation test requires one to
appreciate that a low degree of similarity between the marks/signs may be
offset by a high degree of similarity or the goods/services and vice versa. Other
aspects to consider may be whether there is evidence of actual confusion or
previous decisions to consider.
OHIM Guidelines on the global assessment may be found here.
