Legal Updates

In order to prevent deceptive similarity between two competing marks it is enough to limit the similar mark in a manner which will prevent such deception

October 31, 2020

The owner of a registered trademark requested the deletion of a competing mark, due to the such bearing a close resemblance to the existing mark, amounting to the marks being deceptively similar.
The Trademarks Registrar held that the competing mark was indeed deceptively similar. However, instead of ordering the mark erased, the Registrar ordered that the competing mark be limited to certain colors which will prevent deception of the consumers. In order to determine whether two marks are deceptively similar, a three-pronged test is used: the test of appearance and sound, the test of goods and consumers and the test of other circumstances. The test of appearance and sound, as its name implies, compares the two marks and is aimed at the untrained eye of the consumer, taking into account the consumers imperfect memory. The test of goods and consumers examines whether the good on which both trademarks were registered belong to the same type and commercial family. The test’s aim is to determine whether there is a chance that the consumer may infer a connection between the owner of the registered mark and those using the similar mark or some kind of patronage, and whether potential consumers might confuse products bearing the two marks. The final test, the test of other circumstances, allows to consider other factors, such as the circumstances under which the similar mark was designed, or the existence of other similar marks. In order to determine deceptive similarity between two marks, there is no need to show that consumers were indeed mistaken or confused, merely that the threat of such confusion exists. Here, both trademarks use similar visual elements, and while the similar mark was registered in black and white without limitation of color, in practice, the similar mark used the same colors as the existing mark. Both marks were registered under the same classification, used on overlapping goods, and were aimed at the same consumers. Because the similar trademark was not the product of inspiration from the design of the first trademark and there are no other existing marks, similar enough to prevent a claim of deceptive similarity, the marks are deceptively similar, creating a danger for misleading consumers but that danger can be thwarted by limiting the similar marks to certain colors, different than the ones used by the existing mark.