Trademark similarity - when is the law infringed?
A trademark is an element that distinguishes a specific brand or good from other companies or products of the same type. It is often the basis for promoting or building the image of the company itself and brand reputation. Having a good and recognizable trademark is therefore a huge advantage over the competition on the market. In fact, entrepreneurs often take advantage of the trademark similarity in the hope of making a profit. Sometimes trademark similarity is fully permitted by law, but sometimes it violates the law.
Trademark - the essence of protection
The essence of a trademark is to enable the brand to be distinguished by consumers, also possible in isolation from a specific product. A trade mark should be so distinctive that consumers can easily distinguish it from others under the conditions of normal trade.
Trademark protection - when cannot it be obtained?
Entrepreneurs cannot obtain a protection right for a trademark in a situation where:
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an identical trade mark has already been registered or applied for;
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there is already an identical or similar trademark for which the right of protection has been granted or has been applied for for a protection right, if there is a risk of misleading customers (in particular when there is a risk of their association);
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the trade mark is identical or similar to a reputable trade mark which could harm its reputation or bring any benefit to the applicant. This provision applies accordingly to a commonly known mark.
Trademark similarity - how is it assessed?
Each trademark similarity assessment begins with a comparison of the similarity of the goods and services of the companies concerned. There may be many companies on the market using, for example, the same name. If they operate in different industries, identical names will not be a violation of the law.
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Attention! When filing a trade mark application, the goods and services to which protection is to be applied are specified. The entrepreneur then indicates the industry in which he operates. Therefore, by registering a trademark, the company obtains exclusivity on it, but only within the limits of its industry. It is not possible to obtain a complete monopoly on the sign. The legal monopoly applies only to the goods and services indicated in the application. |
The trademark similarity is assessed in terms of:
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phonetic - do they sound similar,
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visual - do they look similar,
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semantic - are they, for example, synonyms.
On the phonetic level, for example, the number and sound of syllables in a sign and their stress are assessed. With the visual aspect, it is important to compare whether the signs are also visually similar as a result of the similarity of the words or letters used. On the other hand, research on the basis of meaning is aimed at assessing whether the signs evoke similar associations.
As already mentioned, the consumer, when looking for a specific good (No.1), cannot accidentally confuse it with the same good (No.2) produced by another company (thinking that he is buying product No.1).
Example 1.
The company FENIKS, which has reserved its name, selling school bags may report a breach by a company called FENEKS, which also sells school bags. There is a potential risk that consumers will get confused and buy FENEKS satchels, thinking that it is FENIKS.
ASTER florist cannot report an infringement against a company of the same name that produces agricultural equipment, as there is no potential risk that consumers will make a mistake and buy agricultural equipment instead of e.g. a bouquet.
In summary, the similarity of trademarks will be a violation of the law if the companies that use them operate in the same industry. If these are completely different industries and products / services, then the law is not broken. Please note that absolute monopoly on a trademark in all industries is not permissible. Only goods or services may be reserved for exclusivity.
