To alter or protect?
70% is certainly a high similarity score. The answer to this question depends on such factors as how much money and effort the company has invested in the marketing of its products or services using the challenged trademark and customer awareness of the trademark.
For instance, a company contemplates marketing its products under a new trademark. Before filing a trademark application, the company has conducted a check which shows that there exists a registered trademark which has 70% similarity to the company’s mark. In this scenario, the unambiguous advice would be to alter the company’s trademark.
If the company still insists on protecting of its new mark, then it will be necessary to reserve the rights to the mark. For this purpose, an application for registration should be filed. Doing this, the company will at least avoid any issues relating to similar competing trademarks, other than those already revealed.
However, even if an application has been filed, the company should better not hurry investing in the launch and marketing of a new brand. To begin with, it is necessary to assess the chance of successful resolving of the 70% similar prior trademark conflict.
How to resolve a prior trademark conflict?
The first option is to ask the owner of the registered trademark to grant its consent for using and registration of the requesting party’s mark. In most cases owners are cooperative and grant their consent for a certain valuable consideration.
If no agreement is reached, the company can try to cancel registration of a similar trademark for goods or services relevant to the company. Such cancelation is permitted by law if the trademark concerned was registered more than 3 years ago and has not been used by its owner for the specified goods or services.
The following should be assessed for the purpose in re:
1. Is it true that the prior registered trademark has not been used, and what is the chance of success?
2. Will be the company able to prove its interest in cancelation of the prior registered trademark? Just filing an application with Rosopatent will not be sufficient. The organization will need to take steps to enter the market with its trademark;
3. Is the company willing to bear substantial financial and time expenditure for engaging lawyers and trademarks attorneys? Even in the event of a favorable judgement of a court, the matter will still have to be examined by the Chamber for Patent Disputes (Rospatent’s chamber of appeals). The reason is that the timeline for examination of applications at Rospatent is limited and, absent the examiner’s opinion, the court would not be able to order cancellation of the interfering trademark.
Based on the assessment of the above three factors, the company should take an ultimate decision on whether to alter its trademark or seek its legal protection.
What to do if you are using a non-registered mark and the owner of a similar registered trademark jumps on you?
There may be a situation where a non-registered mark has long been used, products labeled with it being widely spread on the market and popular among target consumers. And suddenly the owner of a similar registered trademark appears with its claims against you. In such situation it would certainly be reasonable to protect your mark.
Similarly to the above-mentioned scenario, it is necessary first to compare the goods labeled with the non-registered mark against the goods for which the registered mark has been actually used. Possibly, an agreement can be reached with the registered trademark’s owner to divide the spheres of use, even though they may relate to the same sector, such as food industry. For example, the prior trademark would be used for labeling milk and milk products only, while the company’s mark for meat products. It is critical that each arrangement and understanding of the parties should be formally recorded in their written agreement.
If no amicable agreement is reached, one can try, like in the first described scenario, to cancel the registered trademark due to its non-use or its being registered in violation of applicable law. In particular, you may claim that its use may be misleading to consumers as the goods or services labeled with your company’s mark appeared on the market long before the disputed trademark appeared, and they are associated by consumers exclusively with the company. Under certain circumstances, it may be proved that the person who registered the interfering trademark wished to prevent commercial operations of the company, which is an abusive action prohibited by law.
Mistake by Rospatent
There are cases where a company obtains registration of its trademark and later it turns out that Rospatent had omitted by mistake a prior registered similar trademark. This is a very disagreeable situation, which is rare but still might be faced. As long as the company’s trademark registration term lasts, no claim over illegal use of other’s trademark can be brought. Therefore the owner of the prior trademark would most likely try to contest the company’s trademark registration. The contesting risk exposure will last for five years of the date of publication of the company’s trademark registration in the National Trademark Register of the Russian Federation.
In such situation, the company should defend its trademark. In particular, it would be necessary to collect and submit to the Chamber for Patent Disputes evidence that during examination of your mark Rospatent’s examiner reached the correct well-grounded conclusion on non-similarity. 70% is a high similarity score, but it is still not an absolute 100% similarity. So, arguments might be found to show that consumers would not be confused about the two compared trademarks. If the legality of your trademark registration cannot be affirmed at the Chamber for Patent Disputes, there would still be an opportunity to appeal from Rospatent’s decision to the IP Court.
The case law shows that some companies succeeded in proving the lack of the risk of confusing two trademarks, notwithstanding their high similarity. This was proved by multiple consumer surveys. This showed that the rights of the owner of the prior trademark were not infringed.
It is noteworthy that the Russian Civil Code prohibits inclusion of a mark in the other mark. Such conflicts are most hard for handling as the consumer confusion test does not apply to them.
Thus, the 70% confusing similarity is a serious problem, which cannot always be resolved by minimal financial and time input, as the experience shows. Therefore, before using and launching a new brand on the market, it is always necessary to perform a similarity check for prior similar trademarks. Only after you have analyzed the similarity risks and chances for overcoming prior similar trademark registrations, you can take a decision on whether to alter or protect your trademark.