Sunday 15 July 2012

Darren Olivier

Trade Mark checklist for infringement and oppositions - Part 2

This is the third post in a series that looks at the European approach to the test applied to the most common of the trade mark infringement/opposition provisions. The first post argued for closer alignment with the  systematic European approach to increase the quality of first instance decisions (amongst other things), the second analysed the "principles" as applied in Europe and their relevance in RSA, and this post looks at how these principles are applied  as a checklist by both the European Community Trade Mark Office as well as the UK Intellectual Property Office.

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.

Darren Olivier

Darren Olivier

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