Different words? Different meanings? Different outcomes at 3.00am outside a nightclub? Well no actually, at least from the point of view of a trade mark application.
The EU General Court was recently asked to work out if a new EU trade mark application for the word PUSH (which was applied for in relation to tobacco products) was confusingly similar to an earlier Spanish trade mark for PUNCH (which was registered in relation to identical products). The Court found that there was a likelihood of confusion and, as a result, the PUNCH application was rejected.
Although this may seem like a bit of a smack in the face for the trade mark applicants, the Court did have its reasons and it followed a well-established procedure to work out if the tobacco buying public in Spain was going to get confused. This procedure involves 3 separate comparison tests, these are as follows:
1 – Visual comparison: PUSH vs. PUNCH
- The Court found that there was a visual similarity between the marks on the basis that 3 letters were common to both and these identical letters were at the start and the end of the words.
2 – Phonetic comparison: PU-SH vs. PU-N-CH
- Phonetically the Court looked at the pronunciation of the letter sequences ‘pu’, on the one hand, and ‘sh’ and ‘ch’, on the other hand and found that the marks were phonetically similar. It did not decide that the ‘n’ had a significant impact on this comparison.
3 – Conceptual comparison: “exert force on something in order to move it away from oneself” vs. “a blow with the fist” / “a drink containing fruit juice and, usually, alcohol”
- Given that the relevant consumer in this case was a Spanish smoker, the Court had to decide if this person would actually know the meaning of both of the English words. It found that the meaning of PUSH would be well known but that PUNCH wouldn’t. In these circumstances, because the consumer would only understand the concept behind one of the marks, the Court decided that this test wasn’t relevant to the assessment.
So, given that there were visual and phonetic similarities and the conceptual element was irrelevant, the Court found on an overall assessment that the marks were similar.
Although it can be hard to sympathise with tobacco companies, this judgment shows the difficulties which brands encounter when trying to come up with an original mark. Based on this decision it looks like the threshold for confusion is fairly low and the dream of a PUNCH trade mark, at least in Spain, has now gone up in smoke.
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