No risk of confusion between short marks with one different letter
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On January 18 2011 the Warsaw District Administrative Court has upheld a decision of the Polish Patent Office in which the latter had dismissed an opposition against the registration of the trademark TARGA (R-189862).
The opposition was based on the earlier Community trademark TARA (Registration 827659). The District Administrative Court argued that the likelihood of confusion should be assessed as a whole, taking into consideration all the relevant factors of the case. According to the court, it is important to examine:
- the extent to which the earlier mark is recognised on the market;
- the likelihood that the relevant public will make a link between the marks;
- the degree of similarity between the marks; and
- the similarity between the goods and services covered by the marks.
The court shared the view of the Patent Office: the main function of a trademark is to distinguish the goods and/or services of one undertaking from those of other undertakings. In order to determine whether there is an obstacle to the registration of a trademark under Article 132(2)(2) of the Law on Industrial Property, the following elements must be taken into account:
- the similarity between the marks;
- the similarity between the goods and/or services for which the marks are used; and
- whether there is a risk that consumers will be misled as to the origin of the goods and/or services.
There is a risk of misleading or confusing consumers if the similarity between the marks, as well as the similarity between the goods and/or services, is such that consumers will be misled into making wrong assumptions as to the origin of the goods and/or services covered by the marks.
The assessment of the similarity between the goods and/or services must take into account all the factors which are characteristic of the relationship between those goods and/or services, including:
- their nature;
- their destination;
- their way of use; and
- whether they are in competition with each other or complementary.
The court agreed with the Patent Office that the goods covered by the marks were similar and of the same kind: both trademarks were used for goods which targeted mainly professionals in the field of sanitary installations, construction or architectural design. The court found that these consumers were specialists with an above-average degree of product awareness, who purchased the products at issue in specialised points of retail or wholesale. With regard to the remaining consumers (ie, non-professionals), the court pointed out that the goods at issue were not likely to be bought impulsively.
Turning to the comparison of the marks, the court found that the marks were both simple, and easy to read, pronounce and remember. TARA and TARGA are composed of four or five letters, and the first three letters 'TAR' and the last letter 'A' are identical. The trademark TARGA contains an additional letter 'G'. Both marks are short, so the letter 'G' will be easily noticed and heard by consumers. The court found that the additional letter 'G' would have an impact on the perception of the marks. Where the trademarks concerned are short, one different letter is in general sufficient to exclude similarity.
Therefore, the Patent Office was correct in finding that the marks were sufficiently different to avoid a risk of confusion among consumers.
Slawomira Piotrowska, Patpol - Patent & Trademark Attorneys, Warsaw
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