Legal Updates

The use of an illustration of wings in a watch company trademark is considered a common use and does not amount to deception

August 3, 2021

A watch manufacturer sought to register a trademark similar to the trademark identified as the watch brand "LONGINES", with both trademarks including a graphic design of “wings”, although the design itself, as well as the font and caption accompanying the requested trademark (IRON ANNIE), are different from each another.

The Trademarks Registrar held that the trademarks are not deceptively similar, and approved the registration of the trademark. The basic test for reviewing the existence of deception caused as a result of the existence of a misleading resemblance between trademarks, is the "triple test." The test comprises three subtests: the appearance and sound test; type of goods and the circle of customers test; and the other circumstances test. The appearance and sound test is the main one, under which the trademarks are reviewed as a whole, taking into account the consumer's imperfect memory and the general impression that the trademark leaves on the consumer. In comparing the appearance of the trademarks, special emphasis is given to the dominant components, when generally the verbal component is considered more dominant than the figurative one. Here, the dominant component is the caption, while the use of wings is considered a common use in the watch market. Thus, because the caption in the two trademarks differs in its sound and appearance, and the addition of the wings to the dominant component does not negate the salient differences between the marks, there is no apprehension of deception under to the first subtest. In addition, although there is an identity in the type of goods, the type of customers and the marketing channels, due to the nature of the goods, there is no real concern of deception, as watches are by nature not products purchased on a daily basis without verifying their origin. Therefore, the trademarks are not deceptively similar.