ATLINKS and ADLINK likely to cause confusion

In Atlinks v AdLINK Internet Media AG, a hearing officer at the Irish Patents Office has upheld an opposition to the registration of the mark ATLINKS.

Atlinks applied to register the word mark ATLINKS in Classes 9, 35 and 38 of the Nice Classification. On advertisement, the application was opposed by AdLINK Internet Media AG, basing its opposition on two trademark registrations, namely the word mark ADLINK and a device mark comprising the word ADLINK.

The hearing officer first held that it was immediately apparent that the word mark ADLINK, without any figurative embellishment, was the more similar to Atlinks' mark than the device mark, which contained a visually striking red apostrophe in the middle of the word. He therefore proceeded to assess the likelihood of confusion based only on AdLINK's earlier registration for the word mark.

The case was argued by AdLINK pursuant to Section 10(2)(b) (similar trademark/identical or similar goods) of the Trademarks Act 1996. The hearing officer firstly assessed the similarity between the marks involved by determining the degree of visual, aural and conceptual similarity, and evaluating the importance to be attached to those different elements taking account of the category of goods/services in question and the circumstances in which they are marketed. He indicated that the marks must be viewed and compared as a whole and not broken up into their respective elements 'AD', 'LINK', 'AT' and 'LINKS' which he regarded as an artificial exercise which would not reflect the reality of the perception by the average consumer of a trademark that consists of a single word. On an overall assessment, he regarded the marks as similar. They looked and sounded alike, and conveyed similar meanings. While there were differences between the marks, they were not of such a nature as to impact immediately on the mind of the average person without some level of thought or consideration on his part. This was primarily because the marks consisted of single invented words having no direct meanings and it was only when those words were broken up and analyzed that the differences between them became apparent. On the assumption that the average consumer was unlikely to engage in that level of analysis, he found that the marks should be treated as inherently very similar for the purposes of assessing the likelihood of confusion.

As regards the identity of the goods and services, he held that both the application for registration and the earlier trademark registration covered the same services in Classes 35 and 38, namely advertising and telecommunications respectively. However, the goods in Class 9 of the application were not covered by the earlier registration and the hearing officer, therefore, had to consider whether these goods, which specifically included apparatus for telephony, were similar to telecommunication services for which the earlier mark was protected. He said it was not simply a question of whether the goods and services were of a similar nature (which they were not) but whether they were apt to be perceived by the relevant consumer as emanating from one and the same undertaking. He considered that the average person would find it plausible that a provider of telecommunication services might also manufacture apparatus for telephony, modems and other instruments and apparatus for transmission of sound and images. On that basis, he thought that the respective goods and services must be regarded as similar.

As regards the distinctiveness of the earlier mark, in his opinion AdLINK's mark ADLINK displayed some distinctiveness, but could not be called a highly distinctive trademark. On the whole, he was swayed by the close similarity between the respective trademarks to find that there was sufficient likelihood of confusion on the part of the public to warrant refusal of the application for registration. The simultaneous use of the two similar trademarks in relation to the goods and services in question was more likely than not to result in confusion between them by virtue of imperfect recollection and word of mouth recommendation. Even taking account of the fact that the circumstances of the trade in the respective goods and services reduced somewhat the obvious likelihood of confusion arising from the high degree of similarity between the marks, nevertheless he thought that the average consumer was not likely to exercise such care and attention as to render the likelihood of confusion negligible. Therefore, he refused the application.

Patricia McGovern, P McGovern & Co Solicitors, Dublin