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The question of the confusing similarity between trade marks is one of the major issues in trade mark law. In this article, we'll be discussing confusing similarity in the context of trade mark oppositions.
JAPAN - LOUIS VUITTON v RUI VUIT
In this trade mark opposition case, a Chinese citizen sought to register the trade mark "RUI VUIT" in class 25 for clothing and shoes. Initially, the Japan Patent Office ("JPO") accepted the application. However, Louis Vuitton Malletier opposed the application, citing an earlier registration for the mark "LOUIS VUITTON" in a number of classes, including class 25. The opponent relied on Articles 4(1)(xi) and (xv) of the Japan Trademark Law, which deals with similarity to an earlier registered mark and a likelihood of confusion. The opponent concentrated on the auditory similarities, in other words, the argument that these were similar-sounding marks rather than similar-looking marks.
The JPO Opposition Board found that the marks were not confusingly similar and that the marks were visually distinguishable, given that the words and their spelling were different. On the issue of the alleged auditory similarity, the Board found that the marks were easily distinguishable. As regards conceptual similarities, there were none, with Louis Vuitton being a famous fashion brand.
"The Board has a reason to find a low degree of similarity between the two marks, and even when used on the same or similar goods, there is no risk of confusion due to the dissimilarity of the marks."
EUIPO No. 1 – THE JÄGERMEISTER LABEL
A recent decision at the European Union Intellectual Property Office ("EUIPO") regarding label marks has piqued considerable interest in label marks. An application was filed to register the label that is used for the drinks mark "St JOSEPH". The mark on which the opposition was based was the label used for the well-known drink, "JÄGERMEISTER". There was no similarity in terms of brand names.
The matter was referred to the Board of Appeal ("BOA"). In Europe, degrees of similarity are often referred to, and the BOA held that, in this case, the labels were similar to a low degree due to the fact that both had:
- An almost identical colour scheme (green, white, gold and orange/red)
- A rectangular shape
- A similar structure
- Similar graphic elements
So, even though the brand names were completely different -
Jägermeister and St. Joseph - and the fact that one label had
a deer's head and the other a man's head, there was indeed
a low degree of similarity.
The case was therefore sent back to the Opposition Division for
further consideration. The BOA referred to an earlier decision
where it was held that, depending on the reputation, a low degree
of similarity could be sufficient to assume that consumers would
draw a link between the marks.
EUIPO No.2 - KRAFTWERK
In the case of the ground-breaking German electronic band Kraftwerk, who produced some interesting songs with some really catchy lyrics like "Wir fahren, fahren, fahren auf der Autobahn", Ralf Hütter, one of the co-founders of the band, recently opposed an EU trade mark application for the mark "KRAFTWERK" in class 34 for tobacco and e-cigarettes.
But since Hütter has no trade mark registrations, he chose to rely on the fact that KRAFTWERK is a well-known mark that is entitled to a broad scope of protection. Hütter went on to argue that the trade mark KRAFTWERK is suggestive of a healthy lifestyle, unlike any tobacco trade mark. But why exactly does KRAFTWERK suggest health? Well, that's because Ralf - who describes himself as a "human machine" - likes to go for a cycle, and he seemingly has some sort of "cooperation agreement" with a bicycle manufacturer, Canton.
The EUIPO did not accept this argument and said that even if Ralf does enjoy riding his bike, it doesn't follow that the band Kraftwerk is associated with healthy living. If anything, the band is associated with pioneering electronic music.
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.
