Registering a trademark similar to an existing one

[Lou Gilmour]

Hi All

I'm new to the forums but already am finding it a really useful source of info and advice. I could do with some help with a query regarding trademarks. If anyone is able to help I'd really appreciate it.

I am in the process of setting up a new company and have chosen a new name, but haven't got any further than purchasing domain names at the moment. I'd like to trademark the business name for use in the UK. Having done a search I've found a company with a similar, but not identical, name (for example my name would be The X Y Z Company and theirs is XY Z). They are registered under the same category / classification I would make an application for, although the service I offer is just one of many products and services they offer. They operate in the Netherlands but have an EU trademark. I notice in searching on the EUIPO site that the trademark type is figurative, whereas I would be applying under type word.

Is this likely to be an issue or can I go ahead with applying to register the trademark?

Thanks in advance,

Lou

 

[The Byre]

Sounds mighty like an issue to me!

 

[F_B]

• Is there a risk of confusion? Similar marks for identical services makes me think likely. If so your use could be an infringement of their EU registration.
• Figurative marks are of narrower scope than word marks, so your application would definitely tread on the toes of the other one.
• As part of the UK registration procedure owners of similar UK and International registrations are notified of your application. Owners of EU registrations are not. This means your application could slip through unnoticed. However, the owners of the EU registration may have a watch in place for this reason and this does not negate the infringement risk.
• Is their registration more than 5 years old and is it still being used in the form it is registered? If not it may be invalid for non-use.

Practical points:

1. As you are aware of the similar mark consider attempting to create clear water between the two by registering your mark as a significantly different logo. If it goes ok you can try for the word at a later date.
2. Can you identify any use of the mark outside the Netherlands? If not the owner might not care.
3. Use of a similar mark for similar services is an infringement risk. This does not disappear even with the above.
4. Brexit will not make the EU mark dissapear. It is likely EU marks will somehow continue to cover the UK post brexit although the trade mark industry have not clear plan as yet.

 

[F_B]

Oh and are the marks descriptive of the service too? If so you can be free to use but not free to register (unless in a significantly firguative form).

 

[Lou Gilmour]

Hi FrazerBye

Thanks so much for your helpful and detailed response. It's much appreciated! In response:

• Their trademark is figurative, I'd like to make an application for a words mark. You say figurative is narrower than words, so does that not put me in a better position? I may have misunderstood what you mean by this!
• Their mark was registered in Sept 2011 (expires March 2021) and is still the same logo / mark as they appear to be using now, so I assume still valid?
• If we go ahead with the business name, the logo would most certainly be very different.
• I haven't been able to find any use of the mark outside of the Netherlands. It had occurred to me that perhaps I could make contact with them and be transparent from the start, asking if they have any objections? I think I read somewhere within the application guidance that where a business has a similar name you can include a letter of authority from them with your application?
• Would my mark be considered similar even though theirs is only registered as a figurative mark? I could of course be completely wrong as my understanding in this area is limited, but I had assumed this to essentially mean they have trademarked their logo only?
• The business name could be considered as descriptive I suppose - it would be similar to a business called The Tasty Cheese Company!

 

[F_B]

Word marks protect only the word, no matter how it is presented. So your application for the word only would certainly overlap the existing registration which uses the identical word. So by applying for the word only you're giving yourself the best chance of irking the owner of the EU registration.

If the mark has been used in the form it has been registered then it is still valid. Use does not need to be throughout the whole EU.

I wouldn't recommend contacting the owners beforehand, with trade marks it is better to be in a position of doing it anyway then asking forgiveness (and seeking a coexistence agreement) later.

Regarding similarity:
Are the marks conceptually similar? -Yes as XYZ is only trivially different to X Y Z. The addition of the words The and Company are banal and do not contribute to the distinctive character of a mark.
Are the marks visually similar? -No, one is in a figurative form so they will look different to some degree. That said, if the logo registered is only minimally stylised (e.g. the words in a scrolled font) then they marks may be considered visually similar.
Are the marks phonetically similar? -Yes XYZ is likely to be pronounced in the same way as X Y Z. If someone runs into a shop and asks for an X Y Z will the staff know this is not an XYZ?

Without knowing the marks the above conclusions are unlikely to be correct, but you can try to answer those questions for yourself. The conceptual test is most powerful, if the marks are "only" conceptually similar this will very likely trump the visual and phonetic dissimilarities.

If the mark is descriptive then it is likely free to use. That said, it is surprising what the UKIPO will allow at times. In my opinion The Tasty Cheese Company should not be capable of registration as it refers to a body offering cheese for sale and the word tasty simply refers to an intended character of a product. Any purveyors of cheese could describe themselves as such. The mark is therefore incapable of distinguishing one cheese purveyor from another -the key function of a trade mark.

I recommend you contact a chartered trade mark attorney, they will be able to give you an assessment of the likelihood of success of registering your mark and assess the risk in light of the EU registration. Most give an hour of their time free.

 

[Lou Gilmour]

Thank you so much for taking the time to help and for being so clear - much appreciated!