Legal protection of a trademark: the likelihood of confusion of designations

Legal protection of a trademark. Determination of the probability of confusion of designations. Arbitrage practice.

Not all designations used in civil circulation can be registered as trademarks.

To establish the possibility of registering such a designation as a trademark, first of all, it is necessary to make sure that it is not identical or confusingly similar to the protected trademarks of other persons.

The Intellectual Property Court outlined an approach to determining the likelihood of confusion of designations.

Case plot:

The company owns a verbal trademark, made in the original font with letters of the Latin alphabet of different colors.

An individual entrepreneur who owns a verbal trademark made in black letters of the Russian alphabet has filed an objection to Rospatent against granting legal protection to the trademark of the Company, which, in his opinion, is confusingly similar to his trademark in terms of phonetics.

Rospatent considered the entrepreneur's arguments unfounded and refused to satisfy his objection, which served as the basis for the court to file an application to invalidate the decision of Rospatent.

The Intellectual Property Court, having assessed the conclusions of Rospatent, considered them correct, and therefore refused to satisfy the entrepreneur's claim.

Judicial act: Decision of the Intellectual Property Rights Court dated October 26, 2021 in case No. SIP-600/2021.

Court's findings:

1. When determining the likelihood of confusion of designations used as trademarks, the court may evaluate, among other things, not only the fact of using trademarks in relation to specific goods, but also the duration and scope of their use, recognition of trademarks, as well as other circumstances that can affect , in the opinion of the court, on the perception of consumers, for which opinion polls of ordinary consumers of the relevant goods may also be taken into account.

2. When establishing the probability of confusion of designations, the court takes into account the influence of the degree of homogeneity of goods, the degree of similarity of designations and other circumstances on the likelihood of confusion.

3. To confirm the phonetic similarity of the designations, it is necessary to establish the presence of close and coinciding sounds, the proximity of the sounds used in the designation, the location of close sounds and sound combinations in relation to each other, the presence of matching syllables and their location, the number of syllables in the designations, the place of matching sound combinations in the designations , the proximity of the composition of vowels and consonants, the nature of the coinciding parts of the designations, the occurrence of one designation in another, stress.

4. The probability of confusion of designations used in trademarks is determined not only taking into account the degree of similarity of designations, but also taking into account the degree of homogeneity of goods in the perception of ordinary consumers. At the same time, the fact of mixing can be established even with a low degree of similarity, but the identity of the goods or with a low degree of homogeneity of the goods, but the identity of the trademark designations.

Comments:

1. An important influence on the judicial prospects of similar cases is the evidence presented by the parties, evaluating which, according to its inner conviction, the court establishes the fact of the similarity of designations in terms of graphic, sound and semantic criteria.

2. When preparing to substantiate your position in court, it is advisable to prepare the maximum possible amount of documentary evidence of the presence/absence of facts of confusion of designations in the trademarks used.

3. One of the essential types of evidence in similar disputes is consumer opinion polls submitted by the parties to the lawsuit. Such surveys can have an important impact on the position of the court, since the court must assess the similarity of the signs from the point of view of the ordinary consumer of the product in question, who does not have special knowledge of such products.

4. It must be remembered that the court, when assessing the likelihood of confusion of designations, will take into account the fact that there is a similarity in relation to strong or weak elements of a trademark and will not take into account the similarity of only unprotected elements.

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