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Jill Headford

Posted 13 May 2015
by Jill Headford

The problem of confusingly similar trade marks

Once a trade mark is registered, others will be prevented from registering a confusingly similar mark for the same or similar services.  This poses a problem for a business with a similar name who also wish to register it. 

The time honoured way around the problem of similar existing registered marks is to incorporate the name into a logo in order to make it sufficiently distinctive. However, a recent decision in a European Court shows that this will not always work.

The case concerned frozen food manufacturing company, Iglotex SA, who appealed a decision by the EU to reject their application to register ‘Iglotex’ because it was too similar to an existing trade mark of another frozen food company called ‘Iglo’.

Iglo’s mark was made up of just the word Iglo, whilst Iglotex’s mark included Iglotex + a penguin + a snowflake. Iglotex argued that these distinct elements made their logo sufficiently different. The court rejected this argument for the following reasons:

  • the new elements must be key characteristics of the mark if it is otherwise similar to an existing registered mark. The penguin and snowflake were not key characteristics.
  • the public could confuse Iglotex with Iglo because they sounded and looked similar.
  • consumers were likely to pay the most attention to the first part of a word because it has the most phonetic impact. Therefore just adding ‘tex’ onto the end of “Iglo” would not sufficiently differentiate the marks

Iglotex had presumably spent a lot of money on developing their new logo given that they were willing to go to such lengths in an attempt to register it.

It is crucial when choosing a product name to ensure that it is sufficiently different from names already in use for similar goods or services. Your research should always include a search of existing names.

 

 

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About the author

Jill Headford

Jill Headford

Partner

A partner in the firm since 1994 and an experienced Court and Tribunal advocate, Jill specialises in resolving disputes and is a member of the Property Litigation Association