In the bustling world of commerce, trademarks are indispensable tools for brand identification and consumer trust. Trademarks represent a company’s identity and communicate its products, they prevent confusion among consumers and ensure fair competition and trade practices in the market place. However, what happens when similar trademarks encounter dissimilar goods? This intriguing intersection poses unique challenges and opportunities within the realm of intellectual property.
To recap on the fundamentals of trademarks, a trademark is any sign or combination of signs capable of distinguishing goods or services of one undertaking from those of other undertakings. A trademark helps consumers identify and distinguish goods or services. Trademarks provide consumers with a simple and reliable way to link specific features and qualities with a single brand. They are valuable assets for firms because they may influence consumer decisions and loyalty.
When two trademarks are remarkably similar, there’s a higher likelihood of confusion among consumers and the possibility of free-riding and unfair competition among producers. The trademark laws aim to prevent such confusion and unfair trade practices by establishing rules and guidelines to be followed by trademark examiners before registering a trademark.
In most jurisdictions, a mark must meet the distinctiveness requirement for trademark registration. The mark should be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
When registration is sought for a mark similar to an existing and registered trademark, the element of distinctiveness, among other factors, plays a crucial role and forms the basis for whether the trademark application will be granted or rejected.
Similar Trademarks, Dissimilar Goods:
It is always challenging when the mark sought to be registered is identical to an existing trademark, and often the trademark application in such cases may be rejected. The situation becomes more complicated when similar trademarks are sought for registration in connection with dissimilar goods.
At first glance, registration of similar trademarks for dissimilar products should not be a matter of concern. However, in some instances like when dealing with well-known marks or goods falling in certain trademark classes, this might increase confusion and promote unfair competition.
Well-known or famous marks: A well-known mark refers to those marks that can be recognized and attributed to specific companies without effort. If a mark has become ubiquitous and its associated brand has gained widespread recognition, using a similar mark even for unrelated goods could lead to confusion among consumers.
According to Article 6bis Paris Convention, well-known marks enjoy protection against marks that are likely to cause confusion in the relevant public sectors.
The factors to consider when examining a trademark application for a mark similar to a well-known mark have been laid down by the WIPO Joint Recommendation Concerning the Provision on the Protection of Well-known Marks. These include; the degree of knowledge or recognition of the mark in the relevant sector of the public, the duration of use, extent, and geographical area of any usage of the mark.
Although a trademark like Rolex for the luxury Swiss watch brand is well-known worldwide, a similar mark for dissimilar goods like the street food delicacy in Uganda might not cause any confusion to the consumers of either product, taking into consideration factors like the geographical area of usage and the relevant sector of the public (and consumers).
In cases of similar marks conflicting with well-known marks, trademark examiners have to address two critical questions per Article 16.3 of the Paris Convention;
1. Whether the usage indicates a connection between the goods?
2. Whether the usage will cause damage to the interests of the owner of the well-known mark?
Often, usage of a mark will be deemed as likely to cause damage to a well-known mark if the use is undesirable or demeaning to the famous mark or whether the usage would result in a loss of sales for the well-known mark.
Where the products are distinct, and the reputation of either product is well-established in their different usage, a similar mark may be registered if there is no confusion and it meets the element of distinctiveness.
Trademark Classification: Trademarks are classified into different groups for products or services deemed to be similar. These classes help to prevent the registration of similar marks for similar goods or services by various companies.
Companies sometimes use the same trademark for goods or services falling into different classes as a brand extension. Although this is good practice and an excellent IP and brand management strategy, registering a similar trademark for another company, even for dissimilar goods, could confuse consumers and dilute the trademark.
What to consider before seeking registration of a similar mark for dissimilar goods;
- Trademark & Market Search:
Conducting a trademark search with your National IP office database and the WIPO global trademark database is crucial to establish whether there are registered trademarks similar to the mark for which you seek protection. It is also critical to do an internet search to determine whether unregistered marks could hinder your trademark application and usage. Whether your brand is unknown or the famous brand is not well-known in your geographical area makes no difference. To avoid future brand expansion and foreign registration issues, avoid getting a trademark registration for a mark identical to an existing mark.
By conducting a trademark search, you will determine whether registration and usage of your intended trademark might cause confusion between your mark and existing marks, even though the goods or services the mark is attributed to are distinct.
Obtaining identical trademarks for distinct commodities presents a unique challenge that necessitates a thorough understanding of trademark law, consumer behavior, and market dynamics. Before seeking trademark registration, hiring a trademark agent, conferring with your IP office, and conducting a thorough trademark and market search to verify that you have a valuable and distinctive trademark that protects consumers and encourages fair trade practices is critical.