You may have been struck by the fact that you have come across a trademark for a product that is identical to another trademark that you already knew and that distinguished another product. You may even have come to think: Do both products belong to the same company? Or, in case you had been able to verify that it was not the same company, you might have thought: Are the two companies related in any way?
Our regulations (both nationalas European) in trademark matters permits the coexistence in the market and registration of identical or similar trademarks provided that they distinguish or protect sufficiently differentiated goods or services.. For the so-called principle of specialityThe registration of a trademark grants protection to its owner in relation to specific goods or services. If the goods or services are not sufficiently different from those of another registered trademark, there may be a possibility that such overlapping may cause the consumer to be misled as to their business origin. This is what is technically known as risk of confusion (the possibility that the consumer believes he is purchasing a product from one company, when in fact he is purchasing a product from another), which includes the risk of association (when the consumer is able to differentiate between the two companies but believes that they may be related or linked in some way).
Therefore, in order for two brands to be confusable in the market, not only do they have to be identical o similartheir own; they must also be their own products or services. It seems difficult (and this has been understood by the legislator) for the consumer to believe that a company that markets padlocks under the trademark "LUMA" has any kind of organic, structural or economic relationship with another company that offers real estate services under the same name. This constitutes a real case of coexistence:
The Nice International ClassificationThe system of harmonized grouping of goods and services by class (45), which is used when registering trademarks, may serve as a guide to assess whether two goods or services are similar, but is not, as such, binding. In fact, there are a multitude of goods belonging to different classes that can be considered more or less similar (for example, "clothing" in class 25 and "handbags" in class 18); as well as others belonging to the same class that do not seem to be related (for example, "loudspeakers" and "glasses", both in class 9). It is therefore necessary to consider the true similarity between the goods or services themselves, and not their belonging to one or another Nice class.. If you have doubts about how to choose goods and services for your trademark registration within the Nice Classification, you may find it useful to this post.
The foregoing constitutes the general rule for what are known as ordinary brandsThose that are not particularly well established in the traffic. In other words, those that are not known to the majority of the public. Obviously, most of the brands we come across on a daily basis belong to this group. But what about the brands that do have a higher-than-average level of consumer awareness?
This type of brands, qualified as renownedenjoy a superior right: their sphere of protection extends to products or services, the greater the degree of public awareness, the more disparate the products or services. of such trademarks. If the degree of awareness is such that the mark is known to the general publicits protection extends to any product or serviceIn other words, its owner may prohibit the use or registration of any other identical or similar trademark for totally different products or services. This would be the case, for example, for trademarks such as Coca-Cola, Google or iPhone. Even if Coca-Cola is not registered for "automobile repair" (class 37), The Coca-Cola Company could prohibit someone from marketing or attempting to register a Coca-Cola trademark to distinguish a car repair shop.
The practical problem that gives rise to this article arises when two identical or very similar trademarks, registered and used for different products or services, reach a certain level of renown in the same territory, and their respective spheres of protection (extended to products more or less distant in terms of their level of public awareness) may come to overlap. This sometimes happens because when both brands began to coexist they may not have been so famous; but they gradually gained reputation, until they became generally known. In addition, the emergence of the Internet and globalization in the traffic of products and services led to brands that could only be known in a certain territory becoming known in others. The following examples come to mind at the outset:
- "LOTUS"for cars and "LOTUS"Both of them are registered in the European Union and belong to different owners (files, among others, 9056987 y 200279).
- "DUNLOP"for tires and "DUNLOP"for guitar picks, both of which are also registered in the European Union by different owners (dossier numbers 3867272 y 9450404).
Although the "DUNLOP" brand for guitar picks is not known to the general public, it is clearly known in the music industry; and it is indisputable that the "DUNLOP" brand for tires is known to the general public.
- "BARCELÓ"for hotels and "BARCELÓ"both registered in the European Union, also by different holders (among others, file numbers 13636881 y 925636).
- “MC LAREN"for cars and "MACLAREN"Both are also registered by different owners (among others), this file y this one).
- “JAGUAR"for cars and "JAGUAR"Both are also registered by different owners (among others), this file y this one).
It is not unreasonable to think that the owners of these trademarks could be linked somehow, but the reality is that, as far as we know, are not. Well, what happens in these cases, and can't their coexistence cause confusion o association on the consumer?
In this regard, our European trademark law leaves it to the absolute freedom of the owners to bring an action or not. Prohibitions of registration due to similarity with an earlier mark do not operate automatically.A court or registration office may not refuse or declare invalid a mark that is the same as an earlier mark if the owner of that earlier mark does not bring an action.
In view of the expected high time and cost involved and the normal uncertainty as to the outcome of any proceedings (which trademark acquired notoriety or reputation earlier? Who has infringed whose rights?), coexistence or non-interference agreements are very common in these cases.You don't sell rum and I don't offer hotel services, for example, and everyone is happy. In other words, everything is left to the private negotiation of the two parties. But, Should a general interest in consumer protection take precedence?
If you can think of more examples of identical or similar well-known brands, don't hesitate to write us! And remember that we are trademark lawyers and that here you can find more information about our services.
