The similarity of trademarks is the basis for refusing registration or dispute over recognizing the certificate as invalid. As registration, that means the use of such a trademark, contradicts the primary purpose of TM – to distinguish the goods and services of some people from others.
The article considers the approaches to recognizing the similarity of TM and who should make comparisons: the parties, judges, consumers, or experts.
Criteria for similarity of trademarks
The Law of Ukraine “On Protection of Rights to Marks for Goods and Services” (hereinafter – the Law) stipulates that designations that are identical or similar to such an extent that they may be confused cannot be registered as trademarks, in particular:
– with trademarks previously registered or applied for registration;
– trademarks of other persons, if such trademarks are protected without registration on the territory of Ukraine based on international agreements of Ukraine;
– commercial names that are known in Ukraine and belong to other persons.
Following paragraph 18.104.22.168 of the Rules for drawing up and submitting an application for the issuance of a certificate of Ukraine for goods and services’ mark, approved by order of the State Patent of Ukraine № 116 from 28.07.95 (hereinafter – the Rules) while establishing similarity of symbols (visual) and semantic similarity are taken under consideration.
Similarity criteria are also described in the Guidelines on specific examination issues of the application for goods and services’ mark. The general impression is taken into account when comparing the symbols. It is recommended to pay attention first to the similarity of designations instead of their distinctiveness as similar elements lead to the mixing of signs. The main features of comparison of symbols (sound, graphic and semantic similarity criteria) with examples according to those with standards are described.
As a rule, courts, when making decisions, and experts in providing opinions, refer to these Rules and Guidelines.
An expert or a court?
There are different precedents and positions of courts in Ukrainian judicial practice, which often contradict each other. In addition, you can find 2-3 or more expert studies with opposite conclusions in one case. The following is a list of exciting court decisions on the similarity of TM, particularly in the assessment of forensic examinations from the point of view of the final consumer.
According to the procedural codes, when there is a need for special knowledge, such questions should be delegated to specialized experts. At the same time, the Resolution of the Plenum of the Supreme Commercial Court of Ukraine “On some issues of the practice of appointing forensic experts in disputes related to the protection of intellectual property rights” № 5 of 23.03.2012 determines “when the judge’s knowledge is sufficient to clarify the circumstances, related to the protection of intellectual property rights, a judge (judges) can resolve issues that arise in the case from the consumer’s point of view without the appointment of a forensic examination.” Thus, courts may have different approaches to resolving a case. Unfortunately, the norms do not specify what is meant by “sufficient knowledge.” I think that both the experience of considering intellectual property cases and the complexity and unambiguity of issues should be considered.
The assessment of the signs by the Court and the review from the standpoint of the “end-user” can be seen in the case № 922/3136/16, the subject of which was the similarity of the two signs “Economy Class” – “Diskont Place”:
The Commercial Cassation Court noted that the previous courts had made the contested judgments because the designations were so similar that they could be confused. The appealed court decisions are based on the conclusions of examinations and the report on the sociological survey.
In addition, the Court notes that the “only reason for the appointment of a forensic examination is the need for special knowledge. In this case, there is no need to apply particular knowledge because of the issue’s similarity (regarding the identity of the registered trademark and the disputed designation) the competence of the average consumer of the relevant services.“
The Supreme Court concluded that the decisions challenged by the previous courts had been made in violation of procedural Law and that there was no need to appoint an expert. The Court independently analyzed the designations and concluded that they were not so similar that they could be confused.
In case № 910/18587/16 on invalidation of a certificate, two registered trademarks were compared:
In its ruling of July 15, 2019, the Commercial Cassation Court states that “the perception of brands by the average consumer plays a crucial role in their comparison and evaluation.”
According to the examination results, the experts concluded that the studied signs are dissimilar in semantic features, phonetic features, graphic (visual) features, which is primarily due to the size of the symbols, the presence of pictorial elements as opposed to verbal notation.
The Court emphasizes that “the similarity to the degree of confusion is based on the general impression.” In addition, “the graphic element is sufficient to exclude similarity.” In this case, the courts assessed the conclusions of the examinations by Article 104 of the Commercial Procedural Code of Ukraine and from the point of view of the average consumer and concluded that the signs were dissimilar.
The right of the Court to assess the label from the point of view of the “end-user” is not absolute and should be exercised with the assessment of other evidence.
In the decision of February 20, 2020, in the case № 910/20650/17, the Commercial Cassation Court states the following: “the court of appellate instance did not evaluate the evidence (conclusions of examinations in particular) for violation of procedural law, but instead took over the functions of an expert that are not peculiar to the court. In these circumstances, the said court without sufficient grounds overturned the lawful and reasonable decision of the court of the first instance.”
In addition, the Court stressed the need for expertise, as the similarity of trademarks and kinship (homogeneity) of goods was not evident to the Court. We can assume that this conclusion was formed due to the Court’s approval of several forensic examinations, questioning of experts.
To compare the similarity of symbols can be taken into account the results of sociological research. For example, in the case № 910/21643/17 from August 6, 2018, the issue of invalidation of the certificate № 228350 was initiated in the lawsuit of “Roshen” against “BKK”:
The lawsuit is based on misleading consumers, as the packaging element of the cakes in the form of a red ribbon with a gold or yellow inscription is a well-known element among consumers concerning Roshen products. Among the evidence was a survey report, which established “Determining the level of information among consumers of the packaging element of cakes in the form of a red ribbon with a gold or yellow inscription and consumers’ assessment of the degree of similarity of packaging with this packaging element.” By the decision of August 6, 2018, the forty lawsuits were satisfied, and the sociological survey was taken into account.
After analyzing international experience, you can also find different approaches to assessing the similarity of brands.
In many EU cases, the courts take this into account, with the reasonable opinion of experts. For example, the Court of General Jurisdiction of the EU, in its judgment of 10 October 2019, notes that “Consumer perception of the relevant signs plays a crucial role in assessing the likelihood of confusion. As a result, the average consumer usually perceives the brand as a whole and does not analyze its details.”
* contrasting symbols
However, the Court does not make such an assessment on its own but refers to the conclusion of the EUIPO Appeals Chamber (EU Intellectual Property Office). The Court considers the expert opinion of the Office and does not analyze and compare the designations.
In most of the court decisions found in the United States, the Court’s question of trademark similarity is decided by the Court. For example, in № 14-55253, a judge of the U.S. District Court of Appeals compared the markings by visual, phonetic, and other characteristics and conducted a detailed examination of the similarity of the markings.
In practice, there are different approaches to resolving intellectual property disputes in both Ukrainian and foreign courts. Expert opinions, opinion polls, or comparisons can be made directly by judges when assessing the similarity of trademarks.
On the one hand, there are questions about the predictability of court decisions. On the other hand, the parties are not limited in their actions and evidence. My recommendation to increase the chances of winning the case is to make the most of the adversarial principle and to prove the position of one’s party with all possible evidence. After all, neither the Court nor the expert will collect evidence. To do this, you can use relevant to the position of case law and approaches, order expert opinions, and opinion polls among essential respondents. Separately, I advise you to carefully study the issues that will be asked both to experts and conduct opinion polls. And do not ignore all the available evidence of the acquisition of distinctiveness of each brand.
The question of the endowment of “designations with expert powers” or the right to evaluate designations from the point of view of the final consumer of judges of the High Court of Intellectual Property remains debatable. I hope that the Court will soon work and provide detailed explanations on such issues.
Serhiy Barbashin, attorney at Law and intellectual property expert,
managing partner of Trustme Law Firm,
Deputy Chairman of the UNBA Intellectual Property Committee