10In the judgment of comparison between trademarks, competent authorities have to decide how much 2 trademarks are identical or similar through a comparison which must be conducted under 3 levels: visual, phonetical and conceptual. Let’s see them in detail.
In this post we talk about:
Three levels of comparison
If there are two word marks, visual comparison will analyze the number and sequence of the letters and syllables composing the trademarks.
When visual comparison concerns a verbal and a figurative trademark, it will be important to analyze whether the two brands share a considerable numbers of letters in the same position and how stylized the elements of the figurative trademark are.
When we compare two figurative trademarks, the analysis will only focus on the images composing them
It is necessary to take into consideration the number and sequence of the syllables making up the two brands.
Purely figurative marks are excluded from phonetic evaluation.
According to the EUIPO guidelines (part C, opposition, paragraph 3.4.3.),
“the semantic content of a marks is what it means, what it evokes or, when it is an image or shape, what it represents”.
First of all, if the mark is verbal, it is necessary to take into consideration the meaning of its word in the dictionaries of the relevant territory. This means that, if the mark is Italian, it is necessary to see if the words of which it is composed have meaning in the Italian language.
Result of comparison
Comparison can lead to three different results: the trademarks are identical, the trademarks are similar (with different degree of similarity), or the marks are dissimilar.
The concept of identity must be interpreted in a restrictive way: two marks are considered identical only if they perfectly coincide in all their elements or if the differences between them are so insignificant to be unnoticed in the eyes of the average consumer.
Identity means full coincidence at all levels of comparison, i.e. visual, phonetic and semantic.
In this case it is necessary to take into consideration the distinctive elements of the two brands in comparison.
The famous judgment Sabél of the Court of Justice (C-251/95 of 11 November 1997) clearly stated the following principle:
“The global appreciation of the visual, aural and conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components”.
This means that when we compare two marks, it is very important to evaluate the degree of distinctiveness of the elements composing the brands, because it is one thing to have in common elements scarcely distinctive and it is a different thing to have in common strongly distinctive elements.
It is clear that the commonality of a strongly distinctive element will have more weight in affirming the similarity between two brands. If, on the other hand, the only thing in common is scarcely distinctive, it is likely that the degree of similarity between the two brands will be considered tenuous or even non-existent.
As regards, instead, the evaluation of the dominant elements of the brands, the EUIPO’s practice is to limit the examination to the visual impact, considering the dominant elements “visually relevant”.
In addition to the case in which the two marks do not have elements in common under any of the three levels of comparison,
“the signs are dissimilar if the only element they have in common is negligible in one or both the marks in the sense that, due to its size and/or position, it will probably go unnoticed or be neglected by the relevant public”
(EUIPO Directives concerning the examination before the Office, part C, Opposition, paragraph 4.2.2.)
Together with the criteria set out, we must take into consideration a wide range of rules that must be followed in the examination of concrete cases. For this reason we always suggest you to get in touch with experts in IP sector.