TM Inconsistent Marks

Earlier Mark

A trademark protects against the use of an identical mark for identical goods or services and against similar or identical marks for similar or identical goods or services. Where the identical marks are for identical goods and services, there is no need to prove a likelihood of confusion. In the case of similar or identical trademarks for similar or identical goods and services, a risk of confusion must be shown.

A trade mark application may be refused by the Controller of intellectual property based on a pre-existing mark. It may be opposed following publication by way of an opposition procedure.  It may be raised in defence to legal proceedings by the trade mark owner by way of a declaration that the trademark is invalid.

A trade mark may not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for, are identical with or similar to the goods or services for which the earlier trade mark is protected.

A trade mark may not be registered if it is similar to an earlier trade mark and would be registered for goods or services identical with or similar to those for which the earlier trade mark is protected if there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the later trade mark with the earlier trade mark.

Mark Abroad

An earlier trademark may be one registered in Ireland, as a Community trade mark or as an international trademark registered with the WIPO under the Madrid Protocol, where protection has been extended to Ireland.  It may be based on a pending trademark application.  It may include an unregistered trademark, one which is entitled to protection as a well-known international trademark in accordance with the Paris convention.

If there is an earlier established mark outside the country but within the EU, the earlier mark may be a basis of opposition to registration or invalidity in the State, even in respect of similar goods or services. An earlier trademark may be one registered in Ireland, as a Community trade mark or as an international trademark registered with the WIPO under the Madrid Protocol, where protection has been extended to Ireland.

It may be based on a pending trademark application.  It may include an unregistered trademark, one which is entitled to protection as a well-known international trademark in accordance with the Paris convention.

Reputation in the State

A trade mark which is identical with or similar to an earlier trade mark may not be registered if, or to the extent that, the earlier trade mark has a reputation in the State or, in the case of an EU trade mark, in the European Union) and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.

This applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to, or not similar to those for which the earlier trade mark is protected.

A trade mark may not be registered if, or to the extent that, its use in the State is liable to be prevented

• by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or course of trade. This is subject to the condition that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark and that the unregistered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark; or
• by virtue of an earlier right, in particular by virtue of the law of copyright, registered designs or any other law relating to a right to a name, a right of personal portrayal or an industrial property right; or
• and to the extent pursuant to European Union legislation or the law of the State providing for protections of designations of origin and geographical indications, by virtue of an earlier application that designation of origin or geographical indication confers on the person authorised the rights arising therefrom the right to prohibit the use of a subsequent trade mark
• where by virtue of any such rule of law or earlier right, a person would be entitled to prevent the use of a trade mark

Where grounds for refusal of registration of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied, refusal of registration shall cover those goods or services only.

Earlier Mark

An “earlier trade mark” means

• a registered trade mark,
• an international trade mark or a Community trade mark which has a date of application for registration earlier than that of the trade mark in question,
• a designation of origin or a geographical indication which has a date of application for registration earlier than that of the trade mark in question, or
• a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the Agreement establishing the World Trade Organisation as a well-known trade mark.

The Trade Mark Act allows for the registration of a trademark which might otherwise be refused on the basis of a prior mark on the basis of honest concurrent use.  Where the applicant shows to the satisfaction of the Controller that there has been honest concurrent use of the trade mark for which registration is sought, the Controller may not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

Likelihood of Confusion

The entire circumstances should be considered in relation to whether the requisite degree of similarity and the likelihood of confusion exists. The marks need not be identical in their content but may evoke the same ideas and impressions on the public. There is an emphasis on the initial impression created by the trademarks relative to each other. Trademarks may not be identical but may leave a similar impression notwithstanding imperfect recollection.

The likelihood of confusion or misleading the public arises in this context. Trademarks are compared primarily on the basis of visual impression. However, the medium through which the goods or services are sold and marketed is relevant to the aspect of the marks which are compared. The totality of the trademark should be considered.  It should be considered in the context in which it is commonly used in the trade.

There may be a literal similarity or conceptual similarities between the marks.  The similarity may be in the sound of the words (if any). It should be considered in both the visual and aural similarity.  The similarity of the goods and services will be relevant. In assessing the similarity of goods and services, consideration needs to be given to the nature of the goods or services, the market in which they are sold, their use and purpose, the buyer, the marketing and distribution channels to what extent the goods and services could be provided side by side.

If several of the above factors converge, there is likely to be sufficient similarity for the purpose of refusal of registration. Trademark legislation divides goods and services into different categories.  However, this is not definitive in terms of the similarity of goods or services for the purpose of protection of trademarks.

Confusion Factors

The status of an existing use and mark is relevant if there is a well-established existing use.  This will be relevant to the assessment of similarity. Ultimately, a judgement must be made in relation to similarity and the likelihood of confusion.

In the case of similar goods, there must be a likelihood of confusion. As with passing off, the legislation seeks to protect against the taking of goodwill of one business by another.  The distinct characteristics of the earlier mark are considered in assessing whether the goods and services are similar such as to cause a risk of confusion.

The higher the risk of similarity between the marks and names, the lower the degree of similarity will be required in respect of the goods.  Correspondingly where the goods and services are similar, a lesser degree of similarity between the marks would be sufficient to reject registration or be a defence to infringement.

If there is an earlier established mark outside the country but within the EU, the earlier mark may be a basis of opposition to registration or invalidity in the State, even in respect of similar goods or services.

Separate provisions allow opposition to registration based on existing unregistered rights which have an established reputation.  The owner of the earlier right must be able to show that he would have a right under common law to restrain the later mark use.