Such a distinction – between two trade marks – despite the fact that it may seem entirely subjective, must be made under the influence of a multitude of guidelines and by taking those into account, the examiner appointed to our trade mark application file must make a decision. The distinction is only partially theoretical, since the risk of confusion/association occurs in the mind of the consumer – a place that is both fictitious and real and, what is more, the law does not specify that this risk must necessarily occur in reality, but rather that the possibility of it occurring be real.
In order to express one’s opinion on the existence of a risk of confusion, one must take into consideration, among other things, the identity/similarity of the goods or services for which the earlier trade mark is registered and those for which there is an application for registration of a trade mark (under examination), together with the identity/similarity of the signs.
These are cumulative conditions, meaning that when the signs of the trade marks are identical/similar (for example, two figurative trade marks identical in what concerns their verbal element: XYZ/XYZ) but the goods/services are totally different, it will be possible to establish that a risk of confusion/association may arise only by exception (protection of notorious trade marks; the protection of these type of trade marks is provided by Romanian Law, whereas EU trade mark regulations provide that well known trade marks benefit from this type of protection – nevertheless, the two concepts coincide, the latter including the former) as a result of the existence of an essential intellectual property principle, namely the principle of speciality, according to which the scope of trade mark protection is limited to the goods/services for which it is registered.
There are more factors to be taken into consideration when it comes to the analysis of the possibility of occurrence of a risk of confusion/association between two trade marks, namely: nature of the products/services, distribution channels or the receiving public/end consumer. These additional factors may prove to be essential to the analysis, given that analysis is made in practice on a case-by-case basis.
Therefore, the risk of confusion lies in the confusion which occurs in the mind of the consumer when the consumer visualizes the trade marks in question, whereby he finds that the two trade marks probably belong to the same proprietor, that the same company owns and uses them, or that the proprietors have a certain economical/commercial relationship, ‘taking into account, in particular, their distinctive and dominant elements and the fact that a consumer normally perceives a trade mark as a whole and does not proceed to examine its various details` (Phillip-Van Heusen Corp. Case T-292/01).
Confusion between trade marks can seriously damage a company’s patrimony, image or reputation on the relevant market. We can imagine a situation where the holder X invests tens or even hundreds of thousands of euros in promoting his trade mark, trying to cover as much of the market as possible and to make his/her products/services known to the public. If someone attempts to register a subsequent identical or even similar trade mark and the procedure is a success, the advertising campaign in question would also unfairly benefit the subsequent applicant, thereby causing injury by loss of money/market share to the prior right holder.
It is of the utmost importance that a trade mark proprietor’s reaction be a quick and swift one when it comes to protecting his right. For this reason, when it comes to trade mark protection and choosing the right course of action, we recommend consulting with a professional intellectual property advisor.