Trademark and its classification

Ensure that your trademark logo and brand name exhibit distinctiveness and dissimilarity from any other businesses or registered trademarks within the same class of goods and services currently subsisting in the register of trademarks of the relevant jurisdiction.

Examine visual, aural, and conceptual similarities

Evaluate whether the visual elements of the trademark consist of shapes or colors that could potentially result in a likelihood of confusion. The pronunciation, whether based on words or letters, should not be identical despite differences in spelling. Additionally, if trademarks have similar conceptual meanings, they may be considered confusingly similar, leading to potential trademark disputes or registration issues. The conceptual similarity in trademarks means that two or more marks share a resemblance in their underlying concepts, ideas, or meanings. To assess conceptual similarity, consider the core message conveyed by each mark and whether it conveys a similar message or impression, even if they look or sound different.

Determine the consumer perspective

The consumer perspective considers various factors, such as the overall look, sound, meaning, and commercial impression of the trademarks. Understanding the consumer perspective is crucial to safeguard consumers from potential confusion and deception in the marketplace.

Who used it first?

Imagine receiving a cease-and-desist letter demanding you cease operations of your business and brand due to alleged similarities in logos, slogans, or names. In today’s digital age, trademark infringement accusations are increasingly prevalent. Such issues can arise, particularly when competing businesses operate within the same industry and share a similar geographical market. The party facing the lawsuit or the need to negotiate with the sender of the cease-and-desist letter depends on which business first used the mark and which one registered it first.

If your business operates in the same market as the other one with a similar brand name, there is a clear potential for customers to be confused. Before you could claim Trademark infringement, you must first demonstrate that your business used the name first in order to establish your senior rights to it.

Depends on the country that practices First to File and First to Used systems

An additional crucial consideration is to register your trademark. However, before doing so, your brand must conduct a comprehensive market search to ensure that it does not infringe on other people’s registered marks that share the same logo, brand name, color, or shape.

In “first to file” system countries, the rights are granted to the person who first files the trademark application, even if another party can prove prior use of the trademark. On the other hand, in “first to use” system countries, an unregistered brand being used as a trademark is recognized, and some rights are conferred on the owner.

In “first to file” system countries, the rights are granted to the person who first files the trademark application, even if another party can prove prior use of the trademark. On the other hand, in “first to use” system countries, an unregistered brand being used as a trademark is recognized, and some rights are conferred on the owner.

Learn more about Madrid Protocol

Overlap Trademark

Occasionally, two distinct businesses operating in overlapping markets may typically involve legal proceedings or administrative procedures through MyIPO. However, since the legal system can be costly and time-consuming, opting for negotiations and settlement could indeed be a more practical approach.

Having said the above, it is best to protect your brand as soon as you start your business to avoid any other party riding on your brand and goodwill. As an expert in the field, such a dispute is not surprising. If you are currently facing invalidity claims, infringement, or to claim the invalidation, reach out to us. Our experts are always ready to offer personalized consultancy services, providing insights on how you can optimize your business endeavors.

This article brought to you by Exy Intellectual Property.