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Trade mark confusion

What Is Trade Mark Confusion?

Trade mark confusion is a real problem.

Your trade mark is a unique signifier to consumers of the origin and quality of your products or services. 

It’s just one of the things that stands you apart from your competitors. 

The idea is that it is individual to you. That’s why, when you applied to register your trade mark, the UKIPO (United Kingdom Intellectual Property Office) undertook a search to see whether yours was a valid trade mark. Part of those checks identifies any confusingly similar marks that are already in existence. 

If there is one, and the goods or services in question are similar enough to confuse consumers making them believe they come from the same source, a conflict exists.

The similarity could be concerning sound, appearance, or meaning.   

What does trade mark confusion mean?

The legal definition of confusion comes down to the views of a hypothetical customer. 

Trade mark confusion lies on the views of an average consumer who believes two trade marks belong to the same source.

Therefore, the UKIPO must merely decide whether the possibility of confusion is enough to justify flagging up the newcomer’s use of the mark.

What happens if the likelihood of confusion exists?

Where a similarity between two marks exist, the UKIPO will notify the existing trade mark owner. Then it’s up to you whether the applicant secures its trade mark.

The process for this is different depending on the jurisdiction. However, in both the UK and EU, the Trade Mark Registry does not prevent another trade mark applicant from registering its mark. Even if it’s precisely the same mark for the same goods and services. 

It is then up to the existing trade mark holder to decide whether to object to the newcomer’s application.

How can you protect your trade mark from confusion?

The policing of your trade mark registration is your responsibility. 

One point of note here is that the UKIPO does not notify the holders of EU trade marks of a conflicting UK trade mark application. Therefore, UK applications that conflict with current EU marks on the register can slip through to become registered.

The existence of a trade mark that is confusingly similar to yours is far from ideal. That’s why it’s important to keep an eye on applications that are being filed by others.

However, in reality, you are so busy running and growing your business it is impossible to be fully aware of every registration that occurs.

That’s why it’s important to work with a professional trade mark attorney who can offer you a watching service. They then take responsibility to flag up any potential areas of confusion. That helps you nip any potential issues in the bud. 

It’s worth remembering that it’s a lot cheaper and easier to stop a registration than to apply to cancel it at a later date. 

If you want to protect your trade mark against confusion, or to find out about our WardWatch® service, contact Rachael at Ward Trade Marks using the simple form below.

Ward Trade Marks Limited is a Bury St Edmunds-based specialist trade mark attorney firm.

Contact Rachael or Bill Ward

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March 26, 2019 Rachael