How to conduct similarity assessments in trademark disputes

Determining whether trademarks are similar – and, if so, the degree of similarity – is an important issue in trademark disputes. The Supreme Administrative Court issued some guidance on this matter in an appeal of a specific trademark opposition case in 2022.

Background

Article 30(1)(10) of the Trademark Act stipulates as follows:

A trademark shall not be registered under any of the following circumstances . . . . being identical with or similar to another person's registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper.

The constituent elements of this clause are:

"identical or similar trademarks";

"identical or similar goods or services"; and

"likelihood of causing confusion to relevant consumers".

Decision

The Supreme Administrative Court stated that the judgment of whether two trademarks are similar to each other, and their degree of similarity, should be based on the trademarks' overall design, which is how they are presented to consumers of goods or services.

However, an important element of the principle of overall observation is the so-called "main part observation". Although the trademark is presented as an overall design, if the consumers pay more attention to a certain portion of the designs as the source of its identification, that portion is the "main part" of the trademark design. The observation of the main part is not contradictory to the overall observation, and the main part ultimately affects the overall impression of the trademark on consumers of goods or services.

The Supreme Administrative Court took the same view as the Intellectual Property Office, the Ministry of Economic Affairs and the Intellectual Property and Commercial Court in this specific trademark opposition case, holding that the trademark GIOVANNI VALENTINO was confusingly similar to the cited trademark GIOVANNI.