Why your brand may not be registered - a lawyer explains
Kyiv • UNN
Why registration of a trademark may be refused and which signs may become an obstacle for a business. A lawyer explains how the similarity of brands is assessed and why it is important to check not only identical names.
One of the grounds for refusing to register a trademark is the existence of an earlier registered or applied-for designation that is identical or so similar that consumers may confuse them. At the same time, it is not enough simply to compare two names visually—it is important to assess the likelihood that a consumer will confuse the designations or establish a connection between them. Alina Parkhuta, an intellectual property lawyer at LLC "Law Firm \"LOGIC\"", told UNN in a comment.
According to her, several types of similarity are assessed when comparing trademarks: phonetic (in terms of sound and pronunciation), graphic (in terms of spelling and appearance), and semantic (in terms of the meaning and content conveyed by the designation). For combined trademarks, both the designation as a whole and its individual elements are analyzed, taking into account their distinctiveness.
The lawyer noted that legislation does not provide a clear scale that would define, for example, "30%" or "80%" similarity between marks.
Trademarks may differ in certain elements while simultaneously creating an impression among consumers that the goods or services have a common origin. Therefore, the risk should be assessed not merely according to the principle of "similar or not similar," but with consideration of the overall perception of the designations and the nature of the goods and services
According to the lawyer, the key issue is the likelihood of confusion—that is, the risk that a consumer will incorrectly identify the origin of the goods or services. In particular, a buyer may directly confuse two trademarks, believe that the goods are produced by the same company, assume that there are economic or corporate links between the owners of the marks, or perceive the new designation as a new product line of an already well-known brand.
The lawyer gave an example: if the trademark "LOGIC" is registered for cosmetic products, while another company applies for the designation "LOGIKA" for similar goods, then despite the names not being completely identical, their similar sound and overall perception may create the impression among consumers that the second mark is a new product line or an associated brand of the first.
Parkhuta also drew attention to a common business mistake—checking the register only for the presence of a completely identical trademark. According to her, a designation that differs in spelling but is similar in sound, visual perception, or meaning and is used in relation to identical or related goods and services may also become a potential obstacle to registration.
Therefore, as the lawyer notes, a preliminary trademark search should include not only a check for identical but also for similar designations: analysis of phonetic, graphic, and semantic similarity; examination of combined trademarks and their key elements; analysis of the goods and services for which similar designations are registered; and assessment of the likelihood that consumers will associate the brands with one another.
According to Parkhuta, comprehensive analysis makes it possible to assess the real prospects for registering a trademark before a business begins investing in brand promotion—it is significantly easier and cheaper to identify a potential problem at the creation stage than to change a name after launching advertising, creating a website and packaging, and actively promoting the brand on the market.