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Olga Plyasunova

Trademark attorney

07 February 2020

The confusing similarity of trademarks from the point of view of consumers and professionals: who is right?

It is obvious that the modern consumers need trademarks no less than manufacturers. The level and scale of the market relations lead to the fact that buyers are unable to identify a product by its class or species features and they are forced to use other methods to distinguish the product they have liked.

A trademark is an excellent means for distinguishing the product from other homogeneous ones. The competent and long-term use of the means of individualization leads to a positive assessment and the recognition by the consumer, and, consequently, it provides: the recognition of the product, its manufacturer and other products of this manufacturer in the case of expanding the range of the products, as well as a regular demand and a competitive advantage. All the above circumstances stimulate an active and systematic growth of filing applications for the registration of trademarks.

According to the information provided in the Annual Report of Rospatent for 2018, 66,006 trademarks received the legal protection in Russia.[1] This number allows concluding on a large number of the means of individualization used at the Russian market. It is logical to assume that the more the registered trademarks, the more difficult it is to create the new ones that are not similar to the previous subject matters. Using a rational approach to the creation and registration of a designation at the stage of its development, it is worth, after its creation, to carry out a study for the issue of the patent clearance of the trademark, that is, to find out whether it is new. In the case there are the similar means of individualization that are claimed for the registration or that are already protected, it is advisable to modify the subject matter or to make changes to the intended trademark.  If the check shows a high degree of uniqueness, it is worth filing an application for the state registration.

The inadmissibility of the registration of the identical and confusingly similar trademarks is enshrined in the Subparagraphs 1 and 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation. Such measures are aimed at defending the interests of the consumers and preventing the acts of unfair competition. Despite a direct legal prohibition to use the similar designations for the homogeneous products, there are the practical examples of the cases, when the trademarks that are confusingly similar to the already existing ones are still filed to the registration. The reasons for this may be different: malicious intent, when unfair entrepreneurs rely upon the use of the similar designations, the customer's disagreement with the results of the preliminary check for uniqueness, or the absence of the one at all. Therefore, at the stage of carrying out an examination of the designation in Rospatent, the specialists pay special attention to the analysis of the means of individualization regarding the confusing similarity and identity with the already existing trademarks and other subject matters of intellectual property.

It is worth noting that the persons, who do not have special knowledge, cannot always draw a line between the identical and confusingly similar designations. The identity implies the full identity of the designations. At the same time, the main peculiarity of the confusing similarity is that despite the existing differences of the elements in the trademarks, in general, the designations are perceived as identical, that is, they are easy to be confused.

The opinion of the examiner and the consumer: what is the difference?

An interesting fact is that, in fact, in everyday life, any examiner is the same ordinary consumer as other people, therefore, is it worth talking about the possible differences in the views regarding the similarity of the particular designations?

First of all, it necessary to remind on the prohibition of the use of the confusingly similar trademarks that is aimed at the defense of the interests of the consumers. This means that the specialist, who checks the designation, must assess it, among other things, from the possible buy’s position. In this case, it is important to realize that: the consumer's conclusions on the similarity or difference of the trademarks are based on a quick perception of the designation and a superficial acquaintance with it. That is, the person perceives the trademark as a whole and he pays attention primarily to the dominant elements of the designation.

The examiner, in turn, carries out a detailed analysis of the means of individualization, which is based on the circumstances described above. When checking the trademark, the specialist must determine: which elements prevail in the designation? Is it possible to conclude on the similarity of the dominant elements? By what elements do the designations coincide (word, figurative or as a whole)? Is it admissible to conclude on the fact that the combination of the identical elements will cause the confusion of the compared trademarks in the consumer's mind?

As it was noted by the Federal Arbitration Court of the Russian Federation: “The risk itself is already enough for the recognition of the similarity of the trademarks, and not the actual confusion of the trademarks in the eyes of the consumer.”[2] That is, the examiner’s activity is aimed at identifying even the potential possibility of the confusion of the trademarks in the consumer’s mind, since in reality, the buyer does not have a possibility, time and desire for a long analysis of the designations met by him.

When the opinion of the consumer and the examiner does not coincide

There are the cases, when the Office’s specialists, based on the results of the check, come to the conclusion on the absence of the similarity and register the trademark, but, according to the opinion of the right holder of the earlier designation, the new subject matter leads to the confusion among the products and confuses the consumers. In this case, it is admissible to dispute the results of the examination and, as a consequence, the legal protection granted. A special place in the cases on such disputes is occupied by the results of the sociological surveys carried out among the consumers. Despite the optionality of providing the proofs of such kind, that is, they are not mandatory and they are provided at the initiative of one of the parties to the conflict situation, it can be stated with confidence that the state authorities take up with due interest such surveys and the conclusions obtained in them.

Unfortunately, the current practice shows that the parties to the dispute are sometimes ready to behave in bad faith in order to achieve the necessary solution. The results of such actions are the sociological surveys that generate doubts due to the fact that they include only the final conclusions. This document does not allow studying the opinion of the respondents in particular, but it only allows learning the point of view of the specialist, who has made an expert assessment of the survey. In order to prevent an abuse of the rights under such situations, it seems advisable to introduce some strictly determined requirements that will be applied to such proofs.

In conclusion, it should be noted that in some cases, the opinions of the examiners of Rospatent and the consumers regarding the similarity of the designations differ. However, the purpose of the examination of the designations is to reduce the probability of confusing the consumers, and, consequently, the Office’s specialists, in any case, act in the interests of the ordinary consumers.

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