The importance of likelihood of confusion in trademark law

• IP-IT
• Private Clients
• SME

The question of a likelihood of confusion with prior property right not only arises in the context of trademark applications, but also in connection with the defense of prior property rights. The number of court decisions in this area is extensive. This article sets out the general criteria that must be observed in order to avoid a likelihood of confusion. As the article shows, a specific assessment in each individual case is essential.

Prior trademark research for trademark applications

A professional trademark search not only allows to assess the availability and scope of protection of a trademark and to forecast prospects of success when filing a trademark application, but also helps to identify potential conflicts with a trademark with prior property rights or to take precautions to avoid a possible collision with third-party rights. When filing a trademark application, a prior research is therefore essential to assess and differentiate a trademark from competition and its availability. Failure to carry out research and subsequent registration can result in considerable procedural costs.

Right of exclusivity

Once protection has been successfully granted, the trademark owner has an interest in protecting itself against future infringements by third parties.

The Swiss Trademark Protection Act grants the owner the exclusive right (“exclusive right”) to use and dispose of the trademark to identify the goods or services for which it is claimed. This means that the owner can prohibit third parties from using a sign that is identical or similar and intended for similar goods or services, so that there is a likelihood of confusion. However, trademark protection is limited to the country / countries for which trademark protection has been registered and is generally defined according to the designated goods and services in the trademark register.

Distinctiveness and likelihood of confusion

The stronger the distinctive character of a trademark, the stronger the trademark is protected against more recent trademarks. Signs that appear to be weakly distinctive (e.g. if essential elements are closely related to technical terms in common parlance) do not enjoy the same protection as strong signs. Conversely, this means that the stronger the distinctive character of the sign elements of a trademark, the higher its scope of protection. The same applies to the assessment of the similarity of goods and services. According to case law, the more similar the catalog of goods and services of two signs is, the greater the risk of confusion and the more the younger trademark must stand out from the older one. A particularly strict standard must be applied in the case of identical goods. According to the practice of the Swiss Federal Supreme Court, the question of whether two trademarks are sufficiently different must be assessed on the basis of the overall impression they make on the interested public. Depending on whether it is a word or figurative trademark or a combined word/figurative trademark, the overall impression of a trademark is defined by the sound, the typeface, the graphic design and its meaning.

Direct likelihood of confusion

A likelihood of confusion must be assumed if one trademark is confused with another one (“direct likelihood of confusion”). According to case law, there is a direct likelihood of confusion if identical or similar signs are used for identical or similar goods or services, thus causing misattribution.

Indirect likelihood of confusion

However, a likelihood of confusion may also exist if the relevant public is able to distinguish between the trademarks but assumes incorrect economic connections between them and, in particular, that both labeled offers originate from the same company (“indirect likelihood of confusion”).

Conclusions

The assessment of a possible likelihood of confusion or infringement of prior rights is not easy and, as explained above, depends on various assessment criteria.

• Plan the registration of trademarks carefully by avoiding the use of similar sign elements from earlier property rights and generally refrain from using weak identification elements. Prior availability research is a professional basis for decision-making. This will help you avoid potential legal disputes.
• Monitor your registered trademarks, with help of internal or external support.
• If you believe that an infringement has occurred, react quickly, in particular by issuing a warning and filing an opposition or by concluding contractual agreements with the infringer.

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