The Intermediate Guide to trademark opposition lawyers

TRADEMARK OPPOSITION LAWYERS

Can I Overcome Trademark Oppositions?

Overcoming trademark oppositions is part of the trademark registration process.

Trademark registrations are not always a straightforward process. There are several businesses all competing for recognition within the same industries.

You may wish to apply to register a trademark that is similar to an earlier trademark for underlying goods and services that may trademark opposition lawyers or may not be similar to the goodsand services underlying an earlier trade mark.

The general rule is that a trade mark application can be rejected if there is a risk of confusion or association with an earlier trade mark. The decisive factor in considering the likelihood of confusion is the question of whether there is a risk that the buyer or consumer wrongly attributes the two brands with the same business origin.

When will overcoming trademark oppositions be necessary?

(i) When the application is to register an identical or similar trade mark to an earliertrade mark for similar or identical products and /or services; and

(ii) When the application is to register anidentical or similar trade mark to an earliertrade markfor dissimilar products and /or services;

Clearly, there is a risk of confusion between identical or similar marks,to an earliertrade mark,when the application is to register those marks for similar or identical products and /or services. However, it is less clear that there is a risk of confusion between identical or similar marks,to an earliertrade mark, when the application is to register those marks for dissimilar products and /or services. Further, there have been some cases where trademarks that appear similar,to an earliertrade mark,have not been held to be confusinglysimilar to the earlier trade mark, even where the underlying goods have been similar.

For instance, the European Court of Justice has held that the trademarks could not create a likelihood of confusion, even though both signs in question, as well as the services and products, were considered similar .

In November 2008, the registration of the mark Free Your Style was asked for the goods and services in classes 25, 35 and 41.

In June 2009, the applicant, El Corte Ingls, filed an opposition under Article 41 of Regulation No 207/2009 against all goods and services covered by the registration request. In fact, the earlier trademark, Free Style, also fell in class 25.

Regarding the comparison of goods and services, it is necessary to take into account all relevant factors which characterise the relationship between them. These factors include,inter alia, their nature,their intended use and whether they are competing or complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned . Here, the court held that the services covered by the mark applied for are one of the possible distribution channels of the goods covered by the earlier mark. Therefore, the services and products in question were considered similar.

In regard to the comparison of the signs, it is necessary to analyse the visual and the aural aspect of each brand, as well as the conceptual aspect. In this case, signs were considered to have a low degree of visual similarity and an average degree of phonetic similarity. As regards the conceptual comparison, it did not negate the similarity arising from the visual comparison and aural comparison.