Once you have chosen a brand that can be monopolized and has source-identifying distinctiveness, the next step is to check for any pre-registered trademarks.
Since trademark law protects selection and registration rather than creation, the principle of prior registration is paramount. No matter how creative or original a coined trademark may be, if a similar trademark has already been registered, your application will be rejected.
This rejection applies not only to identical trademarks but also to similar ones. Identifying identical trademarks is straightforward, but determining the boundaries of what constitutes a similar trademark can be more complex.
Likelihood of Confusion
A trademark is considered similar when there is a likelihood of confusion among consumers regarding the source of the goods. If consumers might mistakenly believe that trademarks A and B come from the same company, the marks are deemed similar.
The likelihood of confusion is assessed based on three key elements:
- Pronunciation (sound)
- Appearance (visual)
- Meaning (concept)
Even if only one of these elements is similar, the trademarks may still be considered similar.
1. Pronunciation
Pronunciation is especially important for word-based trademarks. The scope of similarity in pronunciation can be surprisingly broad. For example:
- Korean consonants like “ㄷ” (d) and “ㅌ” (t) are deemed similar.
- Trademarks with the same consonants but different vowels may also be considered similar.
- Even when only letters like m, l, or n differ, the marks can still be judged as similar.
Short trademarks with fewer syllables are more prone to being perceived as similar in overall sound. For instance, the trademarks “대칸” (DaeKhan) and “tecan” were once ruled similar. This is a highly subjective assessment that can vary based on individual perception.
2. Appearance
Visual similarity is particularly relevant for logos and symbol-based trademarks. However, the scope of visual similarity tends to be narrower than that of pronunciation.
Trademarks are not considered visually similar simply because they share the same motif or creative inspiration. Instead, the comparison focuses on whether a consumer without prior knowledge of the trademarks would find them visually similar enough to cause confusion regarding the source of the goods.
In recent years, courts have increasingly ruled that trademarks are not similar if their overall appearance is sufficiently different, even if their pronunciation is similar. This trend reflects the fact that consumers in the digital era often visually perceive trademarks on screens rather than hearing them pronounced.
3. Meaning
Conceptual similarity refers to cases where trademarks convey the same idea, such as the Korean word “말표” (horse) and the English word “horse.” However, confusion due to conceptual similarity is relatively rare.
Even if trademarks share the same meaning, consumers are less likely to confuse them if the words sound entirely different. As a result, recent trademark examinations tend to prioritize pronunciation and appearance over meaning.
General Principles
Although pronunciation, appearance, and meaning are important factors, trademark similarity ultimately hinges on whether consumers are likely to be confused about the source. For example, the Korean trademark “프리다” (Freeda) might be deemed similar to the famous luxury brand “Prada” due to similar pronunciation. However, if “Freeda” is written as “freeda” in English, it may not necessarily cause confusion with “Prada.”
Actual Usage Is Irrelevant
In trademark examination, how a trademark is used in practice does not matter. The comparison focuses solely on the registered trademark and the applied-for trademark to determine whether there is a likelihood of confusion based on pronunciation, appearance, and meaning.
Whole-Trademark Observation vs. Key Element Observation
Another important principle in determining trademark similarity is whole-trademark observation. This means that trademarks are compared in their entirety rather than focusing on a single element.
For example, when comparing “Beyond Platform” with “Beyond,” the trademarks should not automatically be deemed similar just because they share the word “Beyond.”
In the past, trademark examinations often ruled that multi-element trademarks were similar if even one element was identical. However, this mechanical approach has been corrected by numerous court precedents, leading to more refined assessments today.
That said, key element observation is also applied when certain elements of a trademark are particularly significant. If a trademark is composed of both distinctive and non-distinctive elements, the non-distinctive elements may be disregarded in the similarity assessment.
For example, if the trademarks “Whitening AIC Cream” and “AIC Lotion” are used for cosmetics, they may be deemed similar because “whitening,” “cream,” and “lotion” lack distinctiveness in this product category. The comparison would focus on the shared element “AIC.”
Similarly, when a trademark consists of an adjective and a noun, the noun typically carries more weight in the similarity assessment.
Impact of Well-Known Brands
Interestingly, the scope of protection for well-known trademarks can sometimes be narrower. For example, in one case, the trademark “ROLENS” was ruled not to be similar to the famous watch brand “ROLEX.” The court reasoned that due to the high reputation of “ROLEX,” consumers were unlikely to confuse “ROLENS” with it.
Challenges in Determining Similarity
Determining trademark similarity is as challenging as assessing distinctiveness. Although the likelihood of confusion is evaluated based on pronunciation, appearance, and meaning, there is no definitive answer. Judgments can vary depending on the examiner’s or court’s perspective.
The criteria for similarity also evolve over time due to changes in market conditions and consumer behavior. Additionally, factors such as the distinctiveness of the cited trademark and its public recognition must be considered, further complicating the assessment. Therefore, unless there is an identical or nearly identical pre-existing trademark, it can be a viable strategy to file the application and obtain the examiner’s assessment during the examination process.