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CONFUSING SIMILARITY OF TRADEMARKS

Trademark, trade name or symbols, packaging design or the original appearance of the goods: these items are the means that allow a company to stand out of the ruck of competitors and form a recognizable image among the consumers.

Successful investigations often discover imitations of their trademarks capable of misleading consumers. Younger companies equally take risks when using commercial symbols similar to competitors’ products already existing in the market.

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In all cases of an evident similarity of trademarks you must either defend your rights in court, Rospatent (Federal Institute for Industrial Property), or in the Federal Antimonopoly Service or make serious changes your brand. Only an expert can make a reasonable assessment of whether there is a confusing similarity between your trademark and a competing one. However, the final decision rests exclusively with the state authorities. That is why in any doubtful case you should take the following steps:

1. Use the Free Services of the Sociological Examination Laboratory to find out whether there is or is not, a confusing similarity between the means of identification. For instance, try an expert evaluation or a pilot research

2. If the fact of a trademarks’ similarity will be confirmed, apply for an expert opinion on what course of action should be taken for your situation.

SIMILARITY OF TRADEMARKS IN DETAILS

Similarity of trademarks means there exists such a level of likeness of the identification means of goods or services that the consumers cannot tell any difference between them, or believe that the goods or services being compared belong to the same manufacturer.

A legal definition of the notion of “likeness” is given in paragraph 14.4.2. of the “Rules for composing, submission and consideration of an application to register a trademark and a service mark” (Registered with the Ministry of Justice of the Russian Federation on December 8, 1995 under No. 989).

According to the above-mentioned regulatory act, trademarks or other notations may be similar in meaning, phonetically and graphically. It should be mentioned that confusingly similar trademarks are the ones which differ in some details, but still cause a strong association with each other.

Any disputable issues relating to a similarity of trademarks are considered by Rospatent, the Federal Arbitration Court or by the Court for intellectual property rights. Usually, parties resort to court authorities with claims to contest a refusal to register a trademark; taking legal action to protect a company from unfair competition is also possible. Equally often courts consider the lawsuits of misleading of potential consumers, and those related to revealing of confusing similarities of trademarks.

HOW CAN AN EXTENT OF CONFUSION FOR TRADEMARKS BE IDENTIFIED?

A court’s ruling is directly depends on the presence of confusing similarity. Being guided by the “Guidelines for verification of the claimed notations for identity and similarity” (Order of Rospatent No.197 dated December 31, 2009), experts concentrate their attention not on the identity of components or the fonts, but on the overall impression that a trademark makes upon the average consumer.

In many ways, the trademarks’ similarity is subjective, since no stringent and unambiguous criteria exist here. The most relevant factor for the court becomes the opinion of consumers found out by sociological examination or research. It is exactly the result of our examination of a trademark for a confusing similarity that will serve as conclusive proof of your rightness and will help win the case.

1. To protect trademarks, trade names, commercial symbols, product appearance, packaging design and other intellectual property from illegal use by third parties;

2. To suppress any unfair competition characterised by the misleading of potential consumers or by damaging a company’s goodwill through the use of the confusingly similar trademarks.

3.To settle disputes about web domain names;

4. To revoke or prohibit the registration for an identical notation.

See the examples of cases where was used the successful practical implementations of sociological research of trademarks’ confusing similarity:



















You can find more examples of cases, where the results of sociological research was used as proof of confusing similarity here, by telephone, or request them through our “Ask a question”.

To find out more about the examination to identify the extent of a confusing similarity for trademarks and to protect a packaging design or to place an order for a study,
please call (Tel.) 8-800-500-97-95 or inquire by e-mail to:info@socexpertiza.ru.

See also Sections: «“Misleading of Consumers”, “Unfair Competition”, «“Evaluation of Copyright Owner Losses”, “Art. 1252 of the Russian Federation Civil Code, parts 6, 7”, “Art. 1474 of the Russian Federation Civil Code”, “Art. 1483 – 1484 of the Russian Federation Civil Code”, “Art. 1508 of the Russian Federation Civil Code”, “Art. 1515 of the Russian Federation Civil Code”, “Art. 1539 of the Russian Federation Civil Code”.