Trademark similarity - is it allowed?

The number of registered trademarks is really huge and it might seem that the fact that some are almost identical is just a coincidence. This is indeed the case in some situations, but in other circumstances it will be illegal to use a trademark or simply a logo or name confusingly similar to an already registered trademark. When is trademark similarity illegal?

The similarity of trademarks - features

How to determine if the similarity of trademarks does not infringe the law? First of all, it is worth considering what it can be.

Trademarks may be similar in several respects:

• phonetic - when names, internet domains, passwords or logotype elements are sound similar to each other,

• visual - when the features of the logo, but also the way the slogan is arranged, its font or colors make it difficult to distinguish between trademarks,

• semantic - if the analogies between the signs refer to their meaning.

The first two types of similarity between trade marks are by far the most common. The importance of the appearance of the trademark is emphasized by the judgment of the Supreme Administrative Court in Warsaw of February 12, 2015 (ref. II GSK 2139/13): Underestimating the meaning of the graphic of the sign (...) which, however, attracts the attention of the recipient, is not a correct action. If a sign consists of both figurative and verbal elements, it cannot be automatically assumed that the verbal element is the one which should always be regarded as dominant.

The similarity of trademarks on the semantic plane is much more difficult to prove.

Example 1.

Company Y launched the L energy drink and registered the slogan “Be like the king of animals!” As a trademark. The drink was popular, so rival company Z produced the L! and advertised it with the slogan "Be like a lion!".  

In common awareness, the phrases "lion" and "king of animals" are synonyms, so the slogan of the company Z repeats the meaning of the slogan of the company Y. Consumers could be misled due to the similarity of the trademarks.

The above example shows an extremely important feature of the similarity of trademarks as a prohibited act - activities in a similar industry of brands whose trademarks correspond to each other. If brand products belong to the same type, the consumer is exposed to an error and only then can analogies between trademarks cause tangible damage to entrepreneurs.

Example 2.

The wild cat trainer running the business registered the silhouette of a jumping puma as a trademark. A similar logo is used by Puma - a brand of clothing, footwear and sports equipment.

In the situation described above, the consumer cannot confuse brands with each other - the scope of their activity is completely different. Therefore, the similarity of trademarks will not infringe the law.

The similarity of trademarks as an act of unfair competition

As already mentioned, trademarks can take many different forms. These can be logos, logos, internet domains, slogans and other, less obvious forms. They can also be reserved by various institutions, not only entrepreneurs. It is no wonder then that it happens that certain similarities can be observed between some of them, especially if the entities using them do not operate in the same industry or in the same territory. However, the similarity of trademarks is not always accidental - sometimes their similarity is aimed at suggesting to the potential buyer of goods that they are products of the same brand, and thus - have the same features and the same value expressed in money. Such action is undoubtedly an act of unfair competition - misleading the consumer. This act is defined in Art. 5 of the Act on Combating Unfair Competition:

Art. 5. An act of unfair competition is such a designation of an enterprise that may mislead customers as to its identity by using the company name, emblem, letter abbreviation or other characteristic symbol previously legally used to designate another enterprise.

An entrepreneur who consciously and with the intention of misleading the consumer such an action may be liable both under civil and criminal law - the consequences of such an act of unfair competition are specified in further provisions of the Act on Combating Unfair Competition:

Article 25. 1. Whoever, by marking or against the obligation not to mark goods or services, misleads customers as to the origin, quantity, quality, ingredients, method of manufacture, suitability, applicability, repair, maintenance or other essential features of goods or services or fails to inform about the risk associated with their use and thus exposes customers to harm, is liable to arrest or a fine (...).

When defining the similarity of trademarks as a result of an act of unfair competition, it is worth considering the intentions of the entity that started using the trademark as the second, as well as the real possibility of a mistake by the buyer of a good or service.

The similarity of trademarks and their registration

The similarity of trademarks should be especially noted by the Patent Office already at the stage of registration. It is obliged to check whether the mark submitted for registration does not infringe the law, inter alia, by possible misleading the consumer. As indicated by the Industrial Property Law Act:

Art. 145. 1. If the Patent Office finds that there are no statutory conditions for obtaining a protection right for a trademark, it shall issue, subject to para. 2, the decision to refuse to grant it. 2. Before issuing the decision referred to in para. 1, the Patent Office shall set the applicant a time limit to take a position on the collected evidence and materials that may prove the existence of obstacles to obtaining a protection right.

The applicant for the mark may therefore try to prove that analogies between trade marks are accidental and do not in any way affect the possibility of distinguishing goods or services. The basis for such a position may be the indication of different groups of recipients, different industries, different meanings of the words used.

Example 3.

The name of the deceased Beatles member John Lennon is registered as a trademark. The company John Lemon, which produces beverages, operates on the Polish market.

In this situation, the John Lemon trademark does not infringe any legal provisions. Although both parts of the sign sound almost identical, and the phonetic difference between them includes the change of two signs, this is precluded by two premises:

• a different group of recipients,

• another meaning - Lennon as a surname and Lemon as the English name of the fruit - lemon.

However, the Patent Office may refuse to accept the explanations of the entity applying for the trademark infringing, in the opinion of the office, the similarity of the trademarks and refuse to register.