Earlier this month, PayPal opposed a trade mark application for the “Paytm” logo in India.
PayPal filed its opposition citing the visual similarity between the PayPal logo and the Paytm logo (both logos incorporate similar light blue and dark blue elements). It argued that the Paytm logo is “deceptively and confusingly similar” to PayPal’s logo and accused Paytm of “slavishly adopting the two-tone blue colour scheme of its [PayPal’s] logo”.
PayPal went on to argue that both logos incorporate and begin with the word “Pay” and that consumers tend to remember the first part of a logo/mark more than subsequent parts and, accordingly, there would be a “likelihood of confusion” between the PayPal logo/mark and the Paytm logo/mark.
Paytm has been around for some time. PayPal could have objected to the use of Paytm before now by initiating trade mark infringement proceedings in respect of the use of the Paytm logo. It remains to be seen whether the period of concurrent use will be sufficient to beat the likelihood of confusion argument and the PayPal opposition as a whole.
For clients in Paytm’s position, it is worth carrying out searches and seeking to register trade marks as early as possible, rather than finding out later on (e.g. after significant investment has gone into the development of the brand and significant goodwill and reputation in the brand has been established) that a competitor intends to challenge the use of the brand logo based on earlier trade mark rights. For clients in PayPal’s position, it is worth considering the importance of challenging infringement (e.g. apparently confusingly similar use) as early as possible and not ‘sitting on trade mark rights’ (as this can sometimes give rise to defences such as acquiescence and honest concurrent use, resulting in the loss or weakening of those trade mark rights).
Briffa advises on all aspects of contentious and non-contentious intellectual property law matters, including trade mark applications, oppositions and enforcement. If you would like advice on these or any other IP matters, please do get in touch!
By Eamon Chawke