IP ENSight | 5 September 2018

Trade mark comparison: a different concept

by Gerard du Toit

The trade marks Mango and Yango won’t be confused, even if they are used for the same products, so said the hearing officer in a recent trade mark opposition in the UK. On the face of it, this may seem like a strange decision. After all, Mango is a pretty strong and distinctive trade mark. As for Yango, well, that surely looks and sounds pretty similar to Mango?  

Well...yes and no. The visual and phonetic similarities between trade marks are indeed very important, but so are conceptual issues. As the Court of Justice of the European Union said in a case involving the name Picasso (Case C-361/04 P Claude Ruiz Picasso v. OHIM):

“Where the meaning of at least one of the two signs (trade marks) in issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences between them may counteract the visual and phonetic similarities between them.” 

So, exactly how do you go about determining whether or not trade marks are confusingly similar? This issue has come before the South African Supreme Court of Appeal (“SCA”) in a number of cases over the past few years (details of some of these cases appear at the foot of the article). The recent judgments tell us that:

  • the party that’s filed the trade mark application has to do most of the running, because the onus of proof is on the applicant to show that there won’t be confusion. The applicant therefore needs to prove a negative.
  • it is necessary to consider notional use of the trade mark that’s been filed, which means use in relation to any of the goods or services covered by the application. 
  • it is necessary to consider the visual, phonetic and conceptual similarities between the trade marks. In other words, the look, sound and meaning. 
  • the inquiry is basically a “value judgement”, which seems to be a fancy way of saying that it’s pretty much a gut feeling. Recent SCA decisions have said that prior decisions are not particularly helpful. They’ve said that this value judgement is a matter of first impression. They’ve said that there “should not be undue peering at the two marks to find similarities or differences.”
  • the prefixes or first syllables of trade marks tend to be the most important, particularly if they are “striking or inventive.” 

But what about the old judgments and the long-established tests, do they still have any relevance? The SCA doesn’t seem to be suggesting that these old tests are no longer relevant, although it’s not immediately clear how they all fit in with one another. The older cases say that:

  • the likelihood of confusion must be appreciated globally; 
  • there is a need to take account of all relevant factors; 
  • there is need to judge the matter through the eyes of the average consumer, who is reasonably informed, circumspect and observant, but also has imperfect recollection;
  • the average consumer perceives a mark as a whole without considering individual elements; 
  • the visual, aural and conceptual similarities must be assessed with reference to overall impressions. 
  • it is necessary to consider the dominant and striking features of the marks. 

So, how does this all play out in the real world? A recent SCA decision tells us that the trade mark Curida in class 5 for pharmaceuticals, is confusingly similar to an earlier registration for Curitaz in class 5 for pharmaceuticals, because of the shared and distinctive prefix “curi”. Another SCA decision tells us that the trade mark Pepsi Twist for soft drinks is similar to the earlier trade marks Twist, Lemon Twist and Diet Twist – relevant considerations in that decision included the fact that soft drinks are bought by all and sundry, and are “often bought on a whim” and without “careful scrutiny”. Significantly, the court found that the presence of the famous mark Pepsi did not have any effect because it is no more distinctive than Twist.

On the other hand, another recent SCA decision tells us that the trade mark Peppamates is not confusingly similar to the trade mark Peppadew for the same goods because the shared prefix “peppa” is descriptive, whereas the suffixes “dew” and “mates” are both distinctive and distinguishable. Another decision tells us that the trade marks Yuppiechef and Yuppie Gadgets for similar goods or services are not confusingly similar. Reasons for this included the fact that “yuppie is an ordinary word in common use”, whereas the suffixes “chef” and “gadgets” are both “integral parts” and” incapable of being confused.” 

The upshot: the judgments on confusing similarity are often confusing and not always similar.  

Our advice: don’t try this at home! Get professional help.

Some other famous South African decisions on confusing similarity include:

Some older cases include:

  • Plascon Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
  • Cowbell AG v ICS Holdings Ltd 
  • Century City Apartment Property Services CC & Another v Century City Property Owners’ Association 

Reviewed by Gaelyn Scott, head of ENSafrica's IP department. 

 

Gerard du Toit

IP | senior associate
gedutoit@ENSafrica.com
cell: +27 82 885 3337

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