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
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.
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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