DEGREES OF SIMILARITY PUT TO THE TEST

By David Opijah,John Syekei Friday, September 28, 2018
  • SHARE THIS ARTICLE

Similarity in trademarks is a relative ground for refusal of an application for registration of a trademark, according to Section 15(1) of Kenya’s Trademarks Act.

The degree of similarity that can result in such a rejection was recently considered by the country’s assistant registrar of trademarks in a matter involving the word mark F-PACE (TMA No 90958) in Class 12 in the name of Jaguar Land Rover Ltd. The issue for determination was whether the applicant’s trademark was so similar to the mark PACE in Class 12 in the name of Shanghai Durotyre International Trading Co Limited as to cause a likelihood of confusion.

In rejecting the refusal notice, the assistant registrar affirmed in Kenya the test laid out in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97).

Level of care likely to be exercised by consumers

In line with the decision in Lloyd Schuhfabrik Meyer, the assistant registrar emphasised the importance of considering the circumstances in which the marks are used and how the goods or services are to be bought and sold. The distinction between ’once-in-a-lifetime expenditure’ and ’a 50-pence purchase’ must be drawn, as the circumstances surrounding each are different.

The level of care that the prospective customers would exercise in making a purchase is also vital in assessing the likelihood and degree of confusion that the marks would cause in the market. The assistant registrar defined an ordinary customer as being ‘neither too careful nor too careless, but reasonably circumspect, well informed and observant’. The nature of the goods determines the customers’ approach. The assistant registrar was of the view that, as the goods were quite pricey, the customers were unlikely to be deceived into purchasing any other item.

Strength of the earlier trademark

Marks with a highly distinctive character are more likely to be susceptible to confusion compared to marks that have more associative meanings. Using a descriptive element in a mark makes it hard to demonstrate goodwill associated with that element. This allows other parties to register trademarks similar to the descriptive mark as it is weak, and the proprietor cannot claim exclusive rights. The assistant registrar considered that PACE was not distinctive because it referred to movement.

Evidence of actual confusion

Where the trademarks have co-existed in the market for a period of time with no evidence of confusion, then it is highly unlikely that any confusion would occur in future. There is no set time period during which the products should have co-existed. Case law has found periods of four months sufficient for confusion to become apparent. This appears to be an extension of the doctrine of honest concurrent use set out in Section 15(2) of the Trademarks Act.

Similarity between the marks

The possibility of confusion is presumable where the marks are identical. However, a small difference in the marks, as was the case here, makes the likelihood of confusion improbable. The assistant registrar stated that, where the earlier mark has ’little imaginative content’, conceptual similarity between the marks may not be sufficient to cause a likelihood of confusion in the market. The effect is that the trademarks are not similar.

Comment

While the decision appears correct in principle, it might be that the assistant registrar did not address all factors that were key to establishing a likelihood of confusion or all the evidence presented. Particularly, the assistant registrar did not consider the trademarks registered by the applicant in other jurisdictions, even though they were provided. The question arises whether the assistant registrar artificially dissected the marks under her consideration. It is well established that marks must be assessed as a whole, as this is how consumers perceive them. By analysing the dominant element of the marks, ‘PACE’, separately from the other features, the assistant registrar may indeed have artificially dissected the marks.

That said, the distinctive and dominant components of the marks must be taken into account. The assistant registrar’s dissection would appear to have been warranted in that the applicant had argued that the cited mark was not distinctive. Further, the assistant registrar noted the small difference in the marks as indicated above.

Given that decisions can vary, it remains to be seen whether the ruling will be adopted, or regard will not be given to the slight differences between visually similar marks.