Trade Mark Disputes: Why Likelihood of Confusion Isn’t Always Obvious

Likelihood of confusion is a key factor when looking at trade mark infringement cases. Practically, when looking at two similar brand names, you might think it obvious that consumers might mistake one for the other. However, in practice, this assessment may not be clear cut.

The law

The Trade Marks Act 1994 allows trade mark owners to challenge use of a similar mark if there is a likelihood that the public would confuse the two. For example, if someone else starts using a logo that is similar to your registered trade mark; taking all the relevant context into account, is the average consumer likely to believe that the goods/services from each entity come from the same business, or from businesses that are economically linked?

Factors

Factors to consider when assessing likelihood of confusion include:

• Similarity of the marks: how alike they are visually, phonetically, and in terms of their concepts or meaning?

• Similarity of the goods or services: naturally, the more similar (or identical) the goods/services in question are, the higher the likelihood of confusion. Although, even just related goods can be enough to establish a likelihood of confusion.

• How distinctive or well-known the earlier mark already is: a highly distinctive or well-known mark (for example, a household name) has a wider scope of protection, meaning even a less similar later mark may still cause confusion.

The above factors will be considered together, for example, a high degree of similarity between goods can be set off against a lower degree of similarity between the marks themselves, and vice versa. This ‘global assessment’ approach can contribute to the uncertainty of the outcome in these kinds of cases.

Post-sale confusion A recent case highlighted that post-sale confusion may be also considered. In Iconix v Dream Pairs, the case surrounded football boots and use of similar diamond logos by both businesses. The issue was if someone buys a pair of boots from Dream Pairs with their diamond sign on it, and during a football game members of the public perceive the boots to be those made by Umbro (due to the presence of this diamond sign that is similar to Umbro’s trade mark mark), then it can be considered as post-sale confusion. Therefore, the confusion experienced by the public and not the purchaser of the goods can still constitute grounds for infringement.

Takeaways

Practically, it is important to conduct clearance searches before too much time and cost has been invested into a brand name or logo, to mitigate against the risk of challenges further down the line.

Assessment of these cases is fact-specific and it is often difficult to predict the outcome. If you are concerned that another business is using a mark too close to yours, or if you have received a challenge to your own mark, please do get in touch to speak with one of our specialist trade mark lawyers.