The crucial role of reliable similarity screening in trademark registration

“Similar commercial impression” is often extremely difficult to assess correctly. That’s why Trama continues to rely on a highly experienced legal team in addition to its unique AI solution, providing comprehensive risk assessment at the start of every trademark registration.

By

Igor Demcak

case1

Recently, the decision held by the European Union General Court in Luxembourg on the dispute between Chanel and Huawei has attracted a considerable amount of attention. The Chinese corporation has applied for a new trademark in the European Union for its new line of computer hardware products, only to be met with oppositions from Chanel, a well-established luxury fashion retailer. The underlying concern related to the highly similar commercial impression of Huawei’s logo. The ruling of the court recognises that these trademarks “share some similarities but their visual differences are significant” [1]. Huawei seems to have won this battle, being allowed to register and use its trademark for the new product line despite oppositions raised by Chanel.

Although the aforementioned case has become widely publicised over the recent days, there are numerous other similar examples which highlight just how difficult is to assess the extent of similarity in commercial impression correctly. Let us show you two more examples.

case2

This case dates back to 2020 when Super Healthy Kids sought to register a trademark for its Prepear app that allows users store and organise recipes, as well as create custom meal plans. The logo takes the form of a pear with a right-angled leaf. Apple, a global tech giant, has opposed this trademark application, arguing that a similar commercial impression exists. The ruling of the court was somewhat surprising, at least for Natalie Monson from Prepear. “Minimalistic fruit design with a right-angled leaf, which readily calls to mind Apple’s famous Apple logo and creates a similar commercial impression” [2]. The response from Natalie Monson speaks for itself, “it just seems so ridiculous on its face. You wonder if it’s a joke” [2]. Nevertheless, despite no harmful intentions, Prepear trademark was not allowed to be registered.

case3

The final case depicted in this article takes the question of similar commercial impression even further. My Hunt Book trademark registration was successfully opposed by Facebook, revealing that a key distinctive element of logos for both companies is the same - “book”.

Lessons learnt?

  • Similarity in commercial impression is extremely difficult to assess correctly and it is always the best course of action to rely on a trusted partner in order to ensure a successful trademark registration

  • Thanks to its unique blend of AI and experienced team of trademark attorneys, trademark registration process with Trama starts with a comprehensive risk assessment, the result of which you can have within 24 hours

--

[1] BBC News (2021), “Chanel loses EU court battle over Huawei logo”, available from: https://www.bbc.com/news/business-56833244

[2] Sherman, N. (2020), “Bullying Apple fights couple over pear logo”, available from: https://www.bbc.com/news/business-53740820

Igor Demcak

Igor Demcak

Trademark Attorney

Filed over 150 trademarks as a trademark attorney

UPJS Kosice

Gain more insights about the importance of brand in your industry through our selection of indicators and case studies.

hero-fashion