Identical or Similar Trademark

Identical or Similar Trademark

If a trademark is the same or similar to an earlier registered trademark or trademarks, it cannot be registered. According to Section 11(1) of the Trade Marks Act 1999, a trademark shall not be registered if there is a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark, due to its identity or similarity with the earlier trademark (s) and the identity or similarity of goods or services covered by such trademarks. In this post, we take a closer look at what constitutes an identical or similar trademark.

Identical Trademark

A mark is identical to a trademark if it reproduces the trademark without any changes or additions, and all aspects that make up the trademark or were regarded as a whole contain small variances that would go unnoticed by the ordinary customer. As a result, the requirements for classifying a mark as an identical trademark are rather simple.

 

Identical or Similar Trademark

Similarity of Trademark

The word “deceptively similar” refers to a trademark’s similarity to another mark that is “so nearly matching that other mark as to be likely to deceive or induce confusion.”

It is not necessary that actual confusion has formed or should arise in the minds of the general public, i.e. the ordinary consumer, for the likelihood of misunderstanding to exist. As a result, if the mark is likely to cause confusion in the eyes of the typical consumer due to its resemblance to another existing trademark or a trademark for which an application has previously been filed, the mark can be regarded similar.

Furthermore, the three most important aspects of the Trademark Office’s consideration of trademark applications are:

  • The similarities and distinctions between the trademarks in question;
  • The previous mark’s distinctiveness;
  • The degree of similarity between the goods or services in question.

Comparing Two Trademarks for Similarity

Based on the Parker J. in Pianotist case, the guidelines for assessing two trademarks for resemblance have been evolved throughout the years:

“You must take the two terms, judge them by their appearance and sound, and consider the things to which they will be applied, as well as the kind and type of client who will be likely to purchase the goods.” Consider all of the circumstances surrounding the use of each of those trademarks in a typical way as a trademark for the goods and the respective owners of the mark. If there is a risk of misunderstanding, the application must be denied.”

Hence, some of the main principles for comparison of trademarks are:

  1. The comparison should be conducted from the perspective of someone with average intelligence and poor memory.
  2. The overall structural, visual, and phonetic resemblance of the two marks, as well as the fact that there is a substantial likelihood of confusion, should be considered.
  3. The trademark as a whole must be examined. It is not appropriate to compare a portion of a trademark to a portion of another trademark.
  4. It is not necessary to compare letters one by one. The correct test is not a side-by-side comparison.

Furthermore, where the items are pharmaceutical preparations, further safeguards are required due to the likelihood of mistakes over marks on medicinal products – because the potential harm is far greater than in a confusion over regular consumer products.