Are the two trade marks confusingly similar? It's the question that's most commonly asked in trade mark law. The issue of confusion can arise in the context of registration: should the trade mark be registered in the face of the earlier trade mark? It can also arise in the context of use: does the trade mark that's being used infringe the registered trade mark? The two cases that we will consider here both involve registration.
Apples and pears
In a recent decision, the Court of Justice of the European Union ("CJEU") ruled against Apple in an opposition that it had lodged against a trade mark application filed by a Chinese company called Pear Technologies Ltd. The application was for a Pear Logo and it was in classes 9, 35 and 42, covering a range of computer-related goods and services. Apple opposed the application on the basis of registrations for its famous partially-eaten Apple Logo.
The earlier tribunal, the Board of Appeal, held that the Pear Logo was confusingly similar to the Apple Logo. It said that the Pear Logo was allusive of Apple's famous trade mark, and that it created an intellectual link with it. The fact that fruit logos are rare in the product area was a relevant consideration.
But the CJEU disagreed. It said that apples and pears are very different. It pointed to the fact that the Pear Logo does not have a bite out of it. It said that the fame of the Apple Logo was not a factor that should have been considered when determining similarity – fame can be considered in determining whether trade marks are likely to be linked, but only if they are in fact similar.
This case was in the UK. A brewing company, Wadworth, applied to register a trade mark comprising the words Game of Stones and a device of stones in class 32 for beer. HBO opposed this application on the basis of its rights to the trade mark Game of Thrones – the company has a registration covering beer.
The opposition failed, with the UK Intellectual Property Office holding that, although the two trade marks were aurally (phonetically) similar, they were visually and conceptually quite different. The hearing officer accepted that aural similarities are important in the context of beers, given that they are often ordered in noisy and crowded environments such as pubs. But, said the hearing officer, "such purchases are rarely done solely by way of an aural request." The hearing officer felt that the visual and conceptual differences between the trade marks, differences that would be readily apparent from the beer pump handle, would easily distinguish Game of Stones from Game of Thrones. The hearing officer said this: "Taking all of this together, it is my view that whilst the applicant's mark may bring the opponent's sign fleetingly to mind, it will not lead to misrepresentation."
The Game of Thrones decision is a highly practical one, one that seeks to consider exactly how the trade marks will be used in the marketplace. But is it right? South African case law seems to support it. A few years back, we had the case of Distell Ltd v KZN Wines and Spirits, in which the issue was whether Distell's registration for the trade mark Knight's Gold in class 33 for whisky was infringed by a whisky brand called Black Knight. The first court held there was no infringement, with the judge saying that whisky is an expensive product, so the consumer is "likely to exercise circumspection and a greater degree of care in making a purchase." The Supreme Court of Appeal ("SCA") agreed and said this: "Even the consumer with an imperfect recollection and in a noisy pub or crowded bottle store is not likely to be confused as to the origin of Black Knight."
But some may argue that if you're going to be practical you should be realistic too. Alcohol...circumspection, care? A South African judge said these words in an earlier case, words that seem very apt when it comes to deciding cases involving trade marks used for alcohol: "On a convivial occasion, enlivened by the use of beer and spirits, recollection may fade and articulation may deteriorate with the passage of time."
The SCA has over the past few years dealt with a number of cases dealing with confusing similarity. In the case of Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd, the court held that the trade marks Yuppiechef and Yuppie Gadgets were not confusingly similar because of the non-distinctive nature of the word "yuppie", and the differences between the words "chef" and "gadgets". The court made it clear that it favours a practical, no-nonsense approach:
"What is required is a value judgement on the question of the likelihood of deception or confusion based on a global appreciation of the two marks and the overall impression that they leave in the context of the underlying purpose of a trade mark, which is that it is a badge of origin. The value judgement is largely a matter of first impression and there should not be undue peering at the two marks to find similarities and differences."
Despite the myriad of tests and factors the courts have set out over the years, perhaps confusing similarity is little more than gut-feel!
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