(Likelihood of) Confusion?


A VIEW ON SIMILAR BRANDS AND TRADE MARKS

The rule of thumb in trade mark law when deciding whether infringement has taken place is to view the products side by side in order to ascertain whether the ordinary consumer is likely to be confused into thinking the products originate from the same source.

Can you tell the difference between the below fragrances at first glance? We think Prada will have a strong case against Preferred Fragrance for trade mark infringement as it has established a reputation in the trade mark as well as the get-up of the product, namely the girly pink packaging, the shape of the bottle and the ‘party girl’ logo, which elements Preferred Fragrances has copied.
            
The Ukrainians are up in arms after Germany company Henkel released a toilet freshener which resembled the Ukrainian flag, to the extent that Henkel has now removed the product from the market in Eastern Europe.
           
Starbucks lost their case against Black Bear Micro Roastery’s CHARBUCKS coffee blend as the Court did not believe CHARBUCKS could impair the distinctiveness of the internationally well known STARBUCKS brand. We agree with this ruling – when the marks are compared side by side, there is no resemblance between the brands and it is evident that The Black Bear Micro Roastery has not intended to pass itself off as Starbucks.
                       
Rovio, the makers of the popular ANGRY BIRDS game, is suing the manufacturer of golf clubs trading under the name ANGRY CLUBS for trade mark infringement. We believe the golf club manufacturer will succeed in proving that goods offered under the respective marks are not sufficiently similar to cause confusion in the market place.
             
As intellectual property practitioners, we always emphasise to our clients the importance of creating and using a trade mark that is distinctive and original to avoid confusion in the market place or, worse, legal action by third parties. The above cases demonstrate the importance of devising an original trade mark and protecting one’s trade mark as well as the get-up that is associated with the product so to prevent others from benefitting from the goodwill and reputation one has established in the brand.

Kim Rademeyer – Partner
kim@rademeyer.co.za