Briefings > When are two trade marks identical?

In trade mark law, where a sign is used in the course of trade which is identical to that of a registered trade mark, there is real danger of an infringement action being brought against the owner of that sign, especially if the goods or services are identical. No evidence would be needed to show that the effect of the ‘intruder’ in the marketplace is damage to the actual or future business of the owner of the identical mark. On the other hand, if the mark was similar rather than identical, although the same end result might occur because of consumer confusion, there may be call for a lot of evidence in the process of establishing confusion. Thus to show that your (earlier) mark is ‘identical’ (in terms of the law) can be a very important time and cost saving matter.

Also, when a mark in the process of registration is advertised for opposition purposes (for three months in the UK and Europe), anyone with an identical mark can easily block registration for some or all of the goods or services if certain conditions prevail (especially when the goods or services are identical). Even at examination stage, this might also occur, with the examiner objecting to the identicality of the marks.

Generally, before a trade mark is contemplated for registration, and certainly before it is first used in the market place, at the very least there should be a Registry search to see what if any identical (and similar) marks there may already be on the UK Trade Marks Register. This is a basic cautionary measure to prevent grief further down the line and to stop money being spent unnecessarily.

So what makes a mark ‘identical’?

As a preliminary comment, it should be stated that trade mark law is not like mathematics or other exact sciences. It has its own rules of reasoning and logic proper to its tradition. Since trade marks are there to help commerce and to provide consumers with guarantees of origin and quality, what is important, ultimately, is whether consumers themselves in the normal course of viewing brands, might consider a mark identical. The European Court of Justice (‘ECJ’) has defined, from a consumer perspective, what ‘identical’ means: ‘a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (from the case of Arthur et Felicié)

The first part of the definition might seem to simply state what is obvious, but in the past where there was inclusion of non-distinctive elements within a composite mark, one could have still argued identicality. Thus ‘Versace’ and ‘Versace Designer Clothes’ would have been considered identical to all intents and purposes since the ‘Designer Clothes’ element would have been quite descriptive of the goods sold under the mark, the only distinctive element being ‘Versace’. Thus the registered mark ‘Versace’ would have been infringed by the latter on ‘identical’ mark grounds, the identical component having been reproduced. This reasoning was (and is) pertinent to the issue of counterfeiting where often there is an additional sign added to the original reproduced mark. It would be easier for the owner of the mark to sue the counterfeiter if both marks could be considered identical. The first part of the ECJ definition seems to have done away with this type of comparison, having taken a ‘strict’ view of what it means to be identical.

And yet the ECJ introduces another perspective that takes into account the reality of consumer purchasing activities and might still leave open a wider view of what identical means. A whole body of case law has built up over the years leading to the need, when making comparisons between signs, of assessing in a ‘global’ manner the impact or impression of a sign on an average consumer. The impact is not limited to just its visual aspect, but also involves aural and conceptual impressions. Added to this, account has to be taken of the fact that the consumer rarely sees the signs side by side and has to place his trust in an imperfect picture kept in his mind of the other sign. Thus, what is an ‘identical’ sign (as well as ‘similar’ sign for which this case law was originally built up around) is ultimately a matter of judgment that takes several factors into account. Thus, do any differences in the signs (which ‘mathematically’ make the signs non-identical) amount to being ‘insignificant’ and liable to go unnoticed? If so, the signs are identical. Some English case law has given illustrations of what would be regarded as insignificant differences - adding ‘ltd’ to the end of a name, for example. And of course, differences in minor stylisation, font or capitalisation of identical names would be easily argued to be insignificant.

The lesson taken from all this is that when looking to see what competing marks there might be on the Registry, a professional view has to be taken on what might be regarded as being 'identical', a view that is wider than an exact reproduction without addition or omission.

In conclusion, when are two trade marks identical? Answer: because of an inevitable element of subjectivity, for avoidance of doubt, only when a judge says they are!

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