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
2 – Phonetic comparison: PU-SH vs. PU-N-CH
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”
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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