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How similar is too similar

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Lawdit Solicitors - Expert Author

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When checking to see whether a trade mark is available to be registered is it important to not only look for identical marks but also to consider similar ones.

The similarity of a mark is assessed on three levels:

1. Visual this include the sequence of the letters, structure of the mark, number of words and any figurative/graphical elements

2. phonetic i.e. how the mark is referred to in speech

3. conceptual what is the marks semantic content and meaning

The assessment will generally take the form of consideration of the marks as a whole, on the basis that the average consumer will not analyse the elements separately. In this regard any dominant and distinctive elements may play a larger part on the basis that it is these elements that consumers are more likely to remember. The fact that consumers recollection of a mark may not be perfect will also be taken into account. Following on from this another factor to bear in mind is that consumers generally focus their attention on the beginning of a mark and as such similarity in this element of the mark may have a greater influence; although the applicability of this will need to be assessed on a case by case basis as if the mark contains other more dominant elements these may override this consideration.

The marks should also be viewed in conjunction with the goods or services for which they are registered. All goods and services are allocated to a specific class under the Nice Classification (numbering class 1- 45). However the fact that two particular goods or services fall within the same class is not a decisive factor in terms of determining similarity. At best it may be viewed as an indicative factor but this will depend on the scope of the class and as such may not be applicable in all cases. Likewise the fact that two goods or services fall within different classes does not necessarily mean that they are not to be viewed as being similar. An example of this is a goods classification versus a service classification connected with selling that good, for example class 25 which includes clothing and class 35 retail services in the field of clothing. 

Christina King specialises in Intellectual Property advising in particular on trade mark registration and trade mark infringement.


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2007-07-13 00:02:02 in Legal Articles

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