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FEATURE 49.3 Similarity of goods/services In determining the degree of similarity between the respective goods/services, the following should be taken into account: nature of the goods/services, the intended purpose of the goods or services, method of use, whether the goods/services are in competition, whether they are complementary. 49.4 Similarity of marks The visual, aural and conceptual similarities (and differences) between the marks must be assessed and an overall assessment made about the degree of similarity and difference between the marks. The question is not whether the marks are similar under any one of the above headings (although that might be enough to create a likelihood of confusion in some circumstances) but what is the overall extent of the similarities and differences. In this connection, it should be noted that similarity/ difference under one head, eg conceptual similarity/difference, can increase or reduce the effect of similarities or differences under other heads, eg visual or aural similarity. In assessing the degree of aural similarity between two marks one is mainly concerned with word marks or word elements, although pictures with an obvious aural description may also give rise to a degree of aural similarity. The respective marks must be compared as wholes because the average consumer normally perceives marks as a whole and does not proceed to analyse their various details. Nevertheless, it should be borne in mind that although the consumer normally perceives marks as a whole, his or her recollection of them is likely to focus on their dominant and distinctive components. Non-distinctive similarities should not be ignored altogether if they comprise a significant part of the respective marks, but distinctive similarities should be given more weight. FEATURE Non-dominant but distinctive elements may also give rise to a material degree of similarity between the marks where trade mark A is subsumed within trade mark B and yet retains an independent and distinctive role within trade mark B. 49.5 Likelihood of confusion Likelihood of confusion means that it is more likely than not that confusion will arise in the mind of the average consumer for the goods/services at issue. Likelihood of association is not an alternative to likelihood of confusion, “but serves to define its scope”. Mere association, in the sense that the later mark brings the earlier mark to mind is insufficient to find a likelihood of confusion, unless the average consumer, in bringing the earlier mark to mind, is led to expect the goods or services of both marks to be under the control of one single trade source. “The risk that the public might believe that the goods/services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion” (Canon). 49.6 Global comparison The main emphasis in Sabel is the idea that no single factor will lead to a conclusion that there is or is not a likelihood of confusion between marks, a theme shared by the judgments which followed. In Sabel, the court decided that: “The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case.” The three most relevant factors in examination of trade mark applications by the Office will usually be: i) the similarities and differences between the respective trade marks, ii) how distinctive the earlier mark is, and iii) the degree of similarity between the respective goods or services. Once an initial assessment of the individual factors has been undertaken, all three factors must be considered together in order to assess the overall likelihood of confusion. These factors are interdependent. “A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa” (Canon). And, “…the more distinctive the earlier mark, the greater will be the likelihood of confusion.”(Sabel). The weight given to visual, aural and/or conceptual similarities and differences between the marks will vary depending upon the goods or services at issue. For example, purchase of clothing is likely to be on the basis of visual selection, whilst over-the-counter medication or leisure club classes may be purchased orally, rendering the aural comparison paramount (Lloyd). In the case of conceptual comparison, “It is ….not impossible that the conceptual similarity resulting from the fact that the two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.” (Sabel). It is clear from an analysis of the case that the ECJ had very highly distinctive marks in mind, such as a representation of a monkey playing a piano, where the very distinctive common idea behind the marks is likely to outweigh any visual differences in the respective representations of the idea in the perception of the average consumer. Other than in exceptional cases such as this, mere conceptual similarity will be insufficient to give rise to a likelihood of confusion. During ex officio examination the examiner can only have regard to the inherent distinctive character of the earlier mark; enhanced distinctiveness can only be assessed through evidence of reputation, and this is more appropriate to interpartes proceedings. 49.7 Where Trade Mark A is subsumed within Trade Mark B In the case of composite marks comprised of two or more distinctive elements, it will often be difficult to determine that any one of those elements is dominant. 12 ITMA Review November 2007
The most obvious example is that of a full name such as ‘Alexander Morgan’, where both elements contribute roughly equally to the origin identification message sent by the composite sign, which therefore depends upon the presence of both elements. Accordingly, the registrar would not normally regard the marks ‘Alexander’ or ‘Morgan’ as being in conflict with the mark comprised of the full name, even if the respective goods are the same. Nevertheless, there may be cases even of this type where one part of the name will be seen as the dominant and distinctive feature. For example, in the full name ‘Tony Copland’, the surname is rare whereas the forename is common. The surname therefore contributes more to the distinctive character of the mark than the forename. The owners of the ‘Tony Copland’ mark should therefore be notified of ‘Copland’ alone and vice versa (subject to the respective goods/services being identical or at least closely similar) on the basis that ‘Copland’ is the dominant and distinctive feature of ‘Tony Copland’. But the owners of the mark ‘Tony’ would not be notified of the mark ‘Tony Copland’, or vice versa. Where trade mark A is incorporated into trade mark B in such a way that it cannot be said to be a dominant element of trade mark B, there may still be a likelihood of confusion where: i) the respective goods or services are identical or virtually so, and ii) the element which corresponds to trade mark A retains an independent role within trade mark B, and iii) the common element is not prima facie lacking or low in distinctive character. If mark A has limited distinctive character it is less likely that its mere inclusion in mark B will cause relevant consumers to suppose that the users of the respective marks are economically linked. In this connection, it is noted that the ECJ’s guidance in its judgment in the Medion case assumed that mark A was of “average” distinctiveness. In the trade mark shown on the website (www.ipo.gov.uk/tm/tdecisionmaking/t-law/t-law-pan/tlaw-pan-pan807.htm) the dominant November 2007 FEATURE element of the trade mark is probably the word ‘Catania’. However, the word ‘Schachenmayr’ retains an independent and distinctive role within the composite mark. Accordingly, if a third party applied to register ‘Schachenmayr’ (or nomotta) for the same goods, it would be appropriate to notify the owners of the above composite mark (or vice versa). This is because the presence of the independent ‘Schachenmayr’ element in the composite mark would be likely to result in consumers expecting there to be an economic link between the undertaking responsible for the goods sold under that mark and the same goods sold under the mark ‘Schachenmayr’ alone . Where the composite mark appears to comprise of the name or another means of identifying the undertaking responsible for the goods/services combined with a product name, both should be regarded as playing an independent and distinctive role within the composite mark. Accordingly, (again assuming identical goods/services but different proprietors) it is likely that the owners of the mark ‘BJ’s Matrix’ would be notified of the marks ‘BJ’s’ and ‘Matrix’. However, examination of composite marks should not be reduced to a search to find one mark within another. The more the elements of the composite mark ‘hang together’ the less likely it is that the individual elements will have an independently distinctive role within the composite mark. For example, the element POLO is not an independently distinctive element within the composite trade mark ROYAL BERKSHIRE POLO CLUB because the words ’hang together’ as a name. The word POLO does not therefore stand out as having its own independently distinctive role within the composite mark. Further, it is possible for a word to be subsumed within a multiple word mark even though the words do not combine to form a totality with an obvious meaning. For example, it would be difficult to say that the word ‘targets’ has an independent and distinctive role in the composite mark ‘Fashion Week Targets Friday’ (for clothing). Consequently, it is not likely that it would be held to be in conflict with the mark ‘Targets’ solus (again assuming same goods) because it is not the dominant element of that mark, and neither is it an independent and distinctive element of the composite mark. The most difficult case is where mark A (in the example given below CAREAID) is included in a two word composite mark B, such as SPINESPAN CAREAID (for medical services) where the two elements of mark B would appear to the consumer to be a) normally distinctive, and b) entirely independent of each other. If the respective goods/services are also identical, it is quite likely that the relevant consumer will assume that the inclusion of the CAREAID mark as an element in the composite mark SPINESPAN CAREAID is indicative of an economic connection between the undertakings using the marks. Notification of the later mark would therefore be justified if the marks are in different ownership. 49.8 The average consumer The global appreciation of the likelihood of confusion must be made through the eyes and the ears of the “average consumer”. The average consumer will depend upon the type of goods or services in question, so that this may include members of the trade as well as of the general public. He/she is “deemed to be reasonably well informed and reasonably circumspect and observant - but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind” (Lloyd). The consumer’s level of attention is likely to vary according to the category of goods or services, eg closer attention will be paid to the purchase of engineering equipment than is likely for everyday items such as foodstuff. 49.9 Notional and fair use This refers to use across the range of goods/services claimed in any way that would be considered to be normal use of the trade mark in relation to the goods or services in question. Notifications should not be waived on the basis that the goods/services will only be sold in a ITMA Review 13
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