Overcoming trademark oppositions
Overcoming trademark oppositions as part of the trademark registration process.
This article is not and is not meant to be a substitute for professional legal advice. No warranties, representations or undertakings are giving by the author with respect to this article.
You may wish to apply to register a trademark that is similar to an earlier trademark for underlying goods and services that may or may not be similar to the goods and services underlying an earlier trade mark.
The general rule is that a trade mark application can be rejected if there is a risk of confusion or association with an earlier trade mark. The decisive factor in considering the likelihood of confusion is the question of whether there is a risk that the buyer or consumer wrongly attributes the two brands with the same business origin.
Two scenarios can be identified where overcoming trademark oppositions would be necessary:
(i) When the application is to register an identical or similar trade mark to an earlier trade mark for similar or identical products and /or services; and
(ii) When the application is to register an identical or similar trade mark to an earlier trade mark for dissimilar products and /or services;
Clearly there is a risk of confusion between identical or similar marks, to an earlier trade mark, when the application is to register those marks for similar or identical products and /or services. However it is less clear that there is a risk of confusion between identical or similar marks, to an earlier trade mark, when the application is to register those marks for dissimilar products and /or services. Further, there have been some cases where trademarks that appear similar, to an earlier trade mark, have not been held to be confusingly similar to the earlier trade mark, even where the underlying goods have been similar.
For instance, the European Court of Justice has held that the trademarks could not create a likelihood of confusion, even though both signs in question, as well as the services and products, were considered similar .
In November 2008, the registration of the mark “Free Your Style” was asked for the goods and services in classes 25, 35 and 41.
In June 2009, the applicant, El Corte Inglés, filed an opposition under Article 41 of Regulation No 207/2009 against all goods and services covered by the registration request. In fact, the earlier trademark, “Free Style”, also fell in class 25.
Regarding the comparison of goods and services, it is necessary to take into account all relevant factors which characterise the relationship between them. These factors include, inter alia, their nature, their intended use and whether they are competing or complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned . Here, the court held that the services covered by the mark applied for are one of the possible distribution channels of the goods covered by the earlier mark. Therefore, the services and products in question were considered similar.
In regard to the comparison of the signs, it is necessary to analyse the visual and the aural aspect of each brand, as well as the conceptual aspect. In this case, signs were considered to have a low degree of visual similarity and an average degree of phonetic similarity. As regards the conceptual comparison, it did not negate the similarity arising from the visual comparison and aural comparison.
Concerning the likelihood of confusion, it is necessary to perform a global assessment which implies some interdependence between the factors taken into account and, in particular, the similarity of the marks and the goods or services covered. Accordingly, a lesser degree of similarity between the goods or designated services may be offset by a high degree of similarity between the marks, and vice versa.
Here, the Court held that the similarity between the products and services and the similarity between the signs were not strong enough to create a risk that the public might believe that the goods or services in question could come from the same undertaking or from economically linked undertakings. Therefore, no likelihood of confusion existed between the goods and services in question.
Another example is the OHIM Opposition Division’s decision regarding the semi-figurative trademarks “Gourmet” (earlier brand) and “International Gourmet” .
In this case, both trademarks were registered under the classes 29, 30 and 32 and the goods and services were considered as being similar.
As for the comparison of the signs, the trademarks were considered to be similar, from both a visual and aural point of view.
Although one of the trademarks does not include the term “International”, they were considered similar in a conceptual aspect as they both refer to the concept of “Gourmet” (which is a French word used for a gastronomy skilled person). Thus, the trademarks and the goods and services appeared similar. However, in its conclusion, the Opposition Division held that no likelihood of confusion could be established.
In fact, it was pointed out that the term “Gourmet” had no distinctive character regarding the classes concerned : the word “Gourmet” described a characteristic of the products (the good quality of the products) and had a generic connotation in relation to food.
Therefore, it was considered that the small visual and phonetic differences between the signs, and especially the lack of the word “International” in the earlier trademark, were sufficient to counteract the visual, phonetic and conceptual derives from a term without distinctive capacity (“Gourmet”), even for identical products.
Thus, the OHIM considered that there was no risk of confusion among the public. Consequently, the opposition was rejected.
Notwithstanding, the judgment of 16/10/2013 of T282/12 “Free Your Style” and the Opposition Division decision of 21/02/2013, B1884595, “International Gourmet”, are not to be interpreted out of context. Each individual case is assessed by the Opposition Division on its own merits. In the case of “Free Your Style” there were strong, visual and conceptual differences between the signs and in the case of “International Gourmet” the coinciding element “Gourmet” was deemed to have no distinctive character in relations to the goods in question.
Overcoming trademark oppositions – Conclusion
The likelihood of confusion presupposes that the trademark applied for and the earlier trademark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier trademark was registered. However, as proven with the precedents mentioned earlier, a global appreciation of the likelihood of confusion implicates that other circumstances must be examined. For instance, the likelihood of confusion will also depend on the degree of distinctive character of the earlier trademark and the interdependence between the similarities of the trademarks and the similarity of the goods and services involved.