Trade mark law is essentially about preventing consumer
confusion. This means that the issue in your average trade mark
case is this: is there likely to be consumer confusion, given the
similarities between the two marks in dispute, and the similarities
between the products.
Over the years the courts have provided certain guidelines. For example: the likelihood of confusion must be appreciated globally, in other words all factors need to be taken into account; the visual, phonetic and conceptual similarities between the marks need to be considered; the court must view the matter through the eyes of the ordinary customer, bearing in mind that the average Joe probably won't see the two marks side by side, doesn't have a perfect recollection, and may have just a general impression of a mark, or may just remember one striking or dominant feature of it. And, when it comes to comparing the products, we've been told to consider stuff like this: what are they used for; who are they used by; what are they made of; where and how are they sold; who are they sold to (discerning experts or the public at large); are they regarded as competitive products; do they complement one another?
Many trade mark decisions are handed down each year. So,
for example, courts have decided that there would be confusion in
these cases: Micatex and Mikacote, both for paints; Red Bull
and Mad Bull, both for drinks; Seepo and Seeso, both for salt;
Zemax and Zetomax, both for medicines. So far so easy! But
things get trickier when the products differ.
Take the recent South African decision that Zonquasdrift for wine and Zonquasdrif Vineyards for grapes will not be confused. This controversial decision rested on the fact that grapes and wine are completely different things. True enough, but they are very closely linked. A European court has now also handed down an eyebrow-raising decision, finding that TEQUILA MATADOR HECHO EN MEXICO for tequila- based alcoholic drinks will not be confused with MATADOR for beer. The court said that the products may be in the same general category, and they may even be consumed in the same places, but they're very different things: they look different, they taste different, they're made differently, the ingredients are different, they come from different places, they don't complement one another, they don't act as substitutes for one another, and they aren't sold on the same shelves in supermarkets. On top of that, said the court (after a lengthy recess?), beer quenches thirst whereas tequila doesn't. Again all true, but both do make the recollection even more imperfect!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.