PHONETICAL SIMILARITY OF SIGNS
Where a later trade mark is similar or identical to an earlier trade mark registered with EUIPO, following a written complaint by the person concerned, the Office examines the likelihood of confusion and the likelihood of association.
As the CJEU points out, a likelihood of confusion exists if the public could conclude that the goods and services in question come from the same enterprise or possibly from economic related enterprises. On the other hand, the probability of association has a much wider range. Most importantly, the assessment of the likelihood of confusion should be based on the overall impression of the marks, taking into account, inter alia, their distinctive and dominant elements (judgment of the ECJ of 11 November 1997, C-251/95 SABEL).
PRINCIPLES OF ASSESSING THE SIMILARITY OF INDICATIONS
The trademark similarity test includes:
- Comparison of the goods and services for which the marks have been registered,
- Determining the appropriate group of recipients and the level of attention,
- Comparison of signs,
- Assessment of the distinctiveness of the earlier trade mark,
- Checking for other factors.
COMPARISON OF SIGNS
The purpose of comparing the signs is to determine the degree of their similarity. The markings may be identical, similar, or dissimilar. The evaluation of the signs includes a conceptual, visual and aural comparison. It is this last layer that we will focus on in today’s post.
Importantly, the similarity in one plane may be sufficient to find the opposing marks similar (Judgment of the Supreme Administrative Court of 11 December 2012, II GSK 1788/11).
The number and order of letters, the number and order of syllables, their sound and stress are of key importance in the study of phonetic similarity. In the opinion of the Court, the use of the same members in the compared marks only in a changed order does not differentiate these marks in the wording to such an extent as to eliminate the risk of misleading recipients as to the origin of the services (Judgment of the Supreme Administrative Court of February 20, 2007, II GSK 265 / 06).
EUIPO recommends that when comparing signs phonetically, particular attention should be paid to the assessment of common syllables, as the similarity of the overall phonetic impression is most often found on the basis of these common syllables and their identical or similar combinations. Where a sign contains foreign words, it must, in principle, be presumed that the relevant public does not know their native pronunciation. As a result, recipients usually pronounce the foreign word according to the phonetic rules of their own language.
Phonetic similarity turned out to be crucial in the case of Mumkashoes, S.L v. Siarhei Tatarchyk (Judgment of 18 November 2022, B 3 151 505). The case concerns the similarity between the figurative and figurative marks shown below.
The Board of Appeal of EUIPO found no similarities in the graphic aspect of the signs and found that they were distinctive. It points out that, despite the complainant’s opinion, recipients in the European Union do not know the meaning of the words used, and some of them will not notice the fly on the letter “K” in the contested design. Moreover, it points out that in the case of figurative and figurative signs, it is the word elements that have a stronger impact on the consumer. The similarity was found only in the case of goods and services from the two classes of the Nice Classification. Visually, the similarity was rated as “below average”. The situation is different phonetically. Well, the signs were considered to be ‘more than average’ similar to the relevant public. The words will be pronounced in a similar way because they differ only in the consonants “MK” and “KH”. The intonation and the rhythm of the words were also found to coincide.
In sum, the Board of Appeal of EUIPO found the marks to be visually similar to a less than average degree, phonetically more than average, and conceptually either dissimilar or the conceptual aspect is neutral. It is believed that the differences between the signs are not sufficient to overcome the similarities. There is a likelihood of confusion on the part of the public and the objection is therefore partially justified. The contested trade mark must be rejected in the case of goods and services considered to be identical or to a different extent similar to the earlier marks.
It is also worth mentioning other judgments of the Board of Appeal of EUIPO, in which the phonetic similarity of the disputed marks turned out to be predominant.
- ‘The conflicting signs, which are merely distinctive, show a higher-than-average degree of visual similarity and a high degree of phonetic similarity, so that, although different on a conceptual level, the signs in question are very similar on the whole. It therefore concluded that there was a likelihood of confusion in the minds of the relevant public ‘(Judgment of 23 February 2022, T-198/21).
- ‘The first two letters and the last letter are the same in both characters. The sonic resemblance is even greater, as the word “LIDL” would be pronounced often as if spelled LIDEL. For phonetic reasons, it is almost impossible to pronounce D and L in many languages without a vowel between them. Therefore, in languages such as Spanish, Italian, German and French, those marks would be pronounced LIFEL and LIDEL ‘(Judgment of 19 October 2010, R 410 / 2010-1, comparing the signs’ LIDL’ and ‘LIFEL’).
- ‘Germany is the relevant territory. The court found a phonetic similarity. A German consumer is likely to pronounce the letters N and Ñ in the same way. Moreover, the letters P and B are bipolar consonants and can therefore be misleading when accompanied by the same vowel; the marks PAN-OPHTAL and BAÑOFTAL are sonically very similar ‘(Judgment of 12 July 2012 T-346/09 comparing the signs’ KAN-OPHTAL PAN-OPHTAL’ and ‘BAÑOFTAL’).
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