Can “I Am Loving” and “I Am Hating” be Similar?

Authors: Kristina Vilkiene, assistant to attorney-at-law at METIDA, Violeta Sutkiene, associated partner, the Head of Trademark and Design Division at METIDA

Visual (image), phonetic (pronunciation) and semantic (meaning) criteria are as important as other factors, such as lists of goods and services and the reputation or the popularity of the earlier trademark, when assessing the similarity of trademarks and the likelihood confusion. Although each of the aforementioned factors can play an influencing part when examining the similarity between the compared trademarks, this article focuses on how the meaning of a trademark can have an impact on the similarity of the trademarks.

According to the case law, the two trademarks are similar or semantically identical when they are perceived by the consumers as having an identical or analogous semantic content (C-251/95, Sabèl). The concept of the semantic content of the trademark entails either the meaning of the trademark as well as the thoughts and associations it arises or the representation of the trademark when it has an image or a shape. If the sign is composed of different elements, such as word and graphic element, each of these elements is assessed semantically. However, if the mark is comprised by a meaningful statement consisting of two or more words, the meaning of the entire phrase becomes more important than the meaning of each word.

A general principle says a conclusion that the marks are similar in one of the above mentioned criteria may be enough to determine the similarity between the trademarks and evoke the likelihood of confusion. This also applies to the semantic similarity. Specifically, under the case law, the semantic similarity, which occurs due to the images used in both marks with analogous semantic content, may lead to the likelihood of confusion. This could happen when the distinctive feature of an earlier trademark is particularly strong either by itself or by its reputation. However, in cases when the earlier trademark is not well known to the public and consists of a low-level distinctive visual element, the mere fact that the two trademarks are semantically similar will not be sufficient to establish the existence of the likelihood of confusion (C-251/95, Sabèl).

               Previous trademark                                             Later trademark

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Case no. T-33/03
Goods and services: 5 (vitamins, supplements), 32 (beer and soft drinks), 33 (alcoholic beverages), 35 (management of fairs and exhibitions, advertising), 42 (temporary accommodation, food supply) classes. The court confirmed that the characters are semantically similar, but rejected the possibility of the likelihood of confusion even for identical goods, as the signs are not visually and phonetically similar. In addition, it was found that the earlier trademark has a mediocre-level distinctive feature. Therefore, there is no likelihood of confusion.

               Previous trademark                                           Later trademark

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Case no. T-54/12
Goods: 18 (products made out of leather and leather substitutes), 25 (clothing, footwear, headgear), 28 (toys and games, decorations) classes. The court held that the term “sport”, in spite of its descriptive nature, gives the same meaning and leads to the conclusion that there is a certain level of semantic similarity. Also, the court concluded that this similarity is weak with regard to the overall impression created  by the signs as well as an especially weak distinctive feature of this word. Therefore, the semantic similarity does not outweigh the significant visual and phonetic differences between trademarks. And thus, in this case, there is no likelihood of confusion.

                   Previous trademark                                      Later trademark

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Goods: 29 (milk and diary products) class. The court held that the semantic similarity (a reference to the same kind of cheese) is not sufficient to establish the existence of likelihood of confusion, since the earlier trademark is descriptive. In addition, the court stated that the comparative trademarks are visually and phonetically dissimilar.

                   Previous trademark                                      Later trademark

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Case no. C-191/11P
Services: 35 (trading of grocery products), 42 (restaurants) classes. The court held that the semantic differences should be strong enough to deny the visual and phonetic similarity, thus the likelihood of confusion in this case does not exist.

                     Previous trademark                                      Later trademark

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Case no. R 1674/2011-2 (OHIM)
Goods and services: 16 (paper goods, office supplies), 25 (clothing), 35 (trade) classes. The Opposition Division of OHIM partially upheld the opposition against the later trademark registration and rejected the application for the Community trademark for 16, 25 and 35 classes of goods and services. Also, the Board of Appeal, while analyzing the appeal against this decision, confirmed a likelihood of confusion in respect to specific goods of class 16, all goods of class 25 and part of services of class 35, for they are identical or similar. In addition, the trademarks are visually and phonetically similar. From the English speaking consumers’ point of view, the marks are semantical antonyms. To be more precise, the earlier trademark means that a potential consumer is keen on something, for example, food or specific activity, whereas the later trademark means the consumer does not like something or has a negative experience. For consumers who have little knowledge of English or do not speak it at all these trademarks will appear as artificial compounds, and thereby the semantic comparison will not be made. Hence, it was concluded that the comparative trademarks are similar especially for the consumers who do not speak English, since they will not detect the link between the meanings of words “like” and “hate”.

To summarize these examples, we can draw several conclusions. Firstly, the semantic similarity between the compared trademarks (or dissimilarity) is just as important and meaningful for the assessment of the likelihood of confusion as the visual and phonetic criteria. Moreover, even if there is no visual or phonetic similarity between the compared trademarks, the semantic similarity can lead to the likelihood of confusion, especially in cases where the earlier trademark has a strong distinctive feature or reputation. However, if semantically identical or similar items (both words and images) are weak and vivid, the visual and phonetic differences will substantially reduce the likelihood of confusion.

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