The following principles have been developed over many years from the case law and decisions of the Registrar. In each case, the nature of the trade marks will determine the criteria which will be most appropriate to determine whether they are deceptively similar.
Sound as well as appearance to be considered
In determining the resemblance between two trade marks, the possibility of slurred pronunciation, distortion of sound in telephone or other conversations and the syllabic structure of words must be taken into account. On the question of the “sound” of a trade mark, reference can be made to the words of Sargant LJ in the “ Tripcastroid” case, London Lubricants (1920) Limited’s Application (1924) 42 RPC 264 at page 279, line 30:
The only similarity between ” Tripcastroid” and ” Castrol” is in the letters that make up the new word’s center. The new word has a different ending than the old one. Though I agree that if it were the only difference in terms of word ending, it might not be enough of a distinction. However, because people who use the English language tend to slur the ends of words, the beginnings of words are emphasized in comparison, and, in my opinion, the first syllable of a word is, on average, far the most essential for the purposes of distinction.
Imperfect recollection
In considering whether word trade marks, device trade marks or composite trade marks are similar to trade marks which are already registered, the House of Lords in the “ Rysta” case discussed the doctrine of imperfect recollection and the importance of first impression (1943) 60 RPC 87 at page 108:
The answer to whether the sound of one word sounds too much like the sound of another…must almost always rely on the first impression, because obviously, a person who is familiar with both words will not be mislead or confused. The person who just knows one word and has an imperfect recollection of it is the most prone to be duped. A careful examination of the two words, letter by letter and syllable by syllable, delivered with the clarity that one would expect from an elocution teacher, will provide little help.
The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person’s wants.
The ‘idea’ of the trade mark
Despite the fact that the two trade marks under examination may have significant distinctions, if they express the same idea, a cause for rejection under section 44 may apply. When two trade marks with similar attributes are compared, they appear to be different. However, if both trade marks evoke the same idea, and it is believed that certain customers would recall the trade marks based on the idea evoked rather than the precise aspects of the trade marks, the use of the trade marks may cause confusion. Section 44 may then provide grounds for rejection based on the trade marks’ misleading resemblance.
When determining the visual and aural qualities that a consumer is likely to notice and remember, the notion that a trade mark conjures is a vital factor to consider. When comparing trade marks, a comprehensive evaluation should be performed to determine the overall impression that exists.
Marks that contain another trade mark
In general, if one trade mark incorporates the essential distinguishing or memorable feature of another trade mark then confusion may still be likely despite the existence of other material in the trade marks. However consideration must be given in circumstances where because of additional or different material, the trade marks as a whole convey significantly different impressions.
The descriptiveness of the trade mark
In many trade marks, the trade mark or part of the trade mark indicates the goods or types of goods which are covered by the trade mark. The presence of disclaimed material in a trade mark should not be discounted when comparing trade marks. However, non-distinctive matter (whether disclaimed or not) is less likely to be taken as an indication of the origin of the goods or services, and it is therefore usually appropriate to pay less attention to it than to the distinctive feature(s), when comparing marks.
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