What is likelihood of confusion in trademark law?

The likelihood of confusion in trademark law

The likelihood of confusion in trademark law plays a central role in assessing whether a younger trademark infringes the rights of an older trademark. It is a complex issue with many facets that must be carefully examined on a case-by-case basis. In this blog post, we shed light on the different types of likelihood of confusion and their role in trademark law. Registration- and Infringement proceedings.

Whether there is a likelihood of confusion is determined by the interplay between the similarity of the signs on the one hand and the protected goods and services on the other.

Character similarity

The first step is to check how similar the opposing trademarks or company signs are. The main similarities are as follows:

Typographical and visual similarity: This is the case if the trademarks or other identifiers are visually similar. This may be the case, for example, if the trademarks contain similar words, letters, symbols or images. For example, "Rolex" and "Koiex" are visually similar.

Sound similarity: This is the case if the signs of the trade marks are phonetically similar. This may be the case, for example, if the marks contain identical or similar sounds. For example, "Apple" and "Eppel" are phonetically identical.

Conceptual similarity: This is the case if the signs of the trademarks are conceptually similar. This may be the case, for example, if the marks have identical or similar meanings and the younger sign is based on the older one. This is the case with "Slimfast" and "Slimquick", for example.

Mental connection: This is the case if the signs of the trade marks are not identical or similar, but can nevertheless be associated with each other in the mind. This can be the case, for example, if a word mark on the one hand describes a picture on the other. For example, the EGC ruled that "Sky" and "Skype" were neither visually nor phonetically similar, but that the clouds in the old "Skype" logo were mentally associated with "Sky".

Similarity of goods and services

The Similarity of goods and services is an important factor which, in addition to the similarity of the signs, influences the likelihood of confusion between the marks on the part of the relevant public.

The assessment of the similarity of goods and services is based on various criteria, which must be carefully weighed up in each individual case:

• Type of goods or services: The first thing to consider is the type of goods or services. This is categorized by industry, product type and intended use. The closer the goods or services are to each other on the market, the greater the product similarity.
• Target group: The target group at which the goods or services are aimed also plays a role. If the target groups are identical or overlap significantly, this is an indicator of a high degree of similarity between goods and services.
• Distribution channels: The sales channels through which the goods or services are offered can also have an influence on the assessment. If the products or services are offered in the same stores or on the same online platforms, the product similarity tends to be higher.

Examples of similarity of goods and services

• • High similarity:
    • Food: Baked goods and confectionery
    • Clothing: T-shirts and jeans
    • Services: Hairdresser and beautician
  • Medium similarity:
    • Food: Dairy products and meat products
    • Clothing: Shoes and bags
    • Services: Banking and insurance

It does not matter whether different goods or services are classified in the same or different Nice classes. For example, flashlights for diving are classified under "lamps" and watches for diving under "watches", although both goods are directly complementary and are sold through the same distribution channels. They are therefore at least moderately similar.

Likelihood of confusion: Interaction of similarity of signs and similarity of goods and services

The similarity of goods and services is closely related to the similarity of the signs of the trademarks.

• High degree of character similarity: In the case of visually or phonetically very similar trademarks, a lesser similarity of goods and services may be sufficient to establish a likelihood of confusion.
• Low degree of character similarity: In the case of minor visual or phonetic similarities, a high degree of similarity of goods and services may be required to establish a likelihood of confusion.

Examples of the interaction

• Case 1: The marks "Milka" and "Milkafein" are visually very similar. The goods ("chocolate" and "chocolate-based instant drink") are also similar. Therefore, due to the high similarity of the signs and the similarity of the goods, there is a high likelihood of confusion.
• Case 2: A trademark for detergents could not prohibit the use of an identical trademark for computers because there is absolute dissimilarity between the two goods.

Special protection of the well-known brand

In addition to the general protection against the likelihood of confusion, well-known trademarks enjoy a special protection under trademark law. extended protection.

In order to enjoy special protection, a trademark must first be registered as a known are categorized. The recognition of a brand is assessed on the basis of various criteria, such as

• Brand market share: The relative market share of the brand in its relevant market segment.
• Degree of awareness: The level of awareness of the brand among the public, in particular among consumers who buy the goods or services of the brand.
• Duration of use: The duration of use of the trademark in the market.
• Geographical reach: The geographical reach of the brand, i.e. in which countries or regions it is known.
• Investments in the brand: The brand owner's investment in advertising and marketing the brand.
• Prestige and reputation of the brand: The prestige and reputation of the brand among consumers.

Awareness must be achieved through Traffic report be established. The special protection of a well-known trademark offers the trademark owner a more comprehensive protection than the general protection against likelihood of confusion. This means that the owner of a well-known trademark can also take action against infringements of their trademark that do not give rise to a likelihood of confusion within the meaning of trademark law.

Special protection can be asserted against various types of detriment to the trademark, in particular against the Exploitation or impairment of good reputation. Our permanent opponents BMW, Louis Vuitton and Harley-Davidson for example, regularly argue that their good reputation is exploited by unified trademark infringements.

Consequences in the event of a likelihood of confusion

With Warning letters and infringement actions in trademark law Likelihood of confusion is the central issue. If there is a likelihood of confusion between the trademark that is the subject of the warning or lawsuit and the younger trademark, the owner of the older trademark can demand an injunction, information, compensation and reimbursement of the warning costs.

With the Registration of trademarks the existence of a likelihood of confusion is not examined by the respective patent and trademark office. However, if the owner of an earlier trademark objects to the likelihood of confusion in opposition or nullity proceedings, the later trademark will be canceled.

Conclusion

The likelihood of confusion in trademark law is a complex issue with far-reaching consequences. Companies should therefore seek professional advice when developing and registering trademarks. A specialist trademark lawyer can help to identify the risk of confusion at an early stage and take suitable measures to protect the trademark in the best possible way.