A trademark is one of the most important intangible assets of an enterprise, as it represents its commercial identity and enables consumers to distinguish its goods or services from those of others. One of the most prominent issues arising in the field of intellectual property is the similarity between trademarks and the resulting likelihood of confusion or misleading the public. In assessing such similarity, competent authorities and courts rely on a number of criteria that help determine whether the similarity is material or not.
Foremost among these criteria is the overall appearance or general impression of the mark. The decisive consideration is not the minute details or the individual elements of each mark, but rather the overall impression that the mark leaves in the mind of the average consumer of ordinary attention. If the overall composition of the two marks is sufficiently close as to give rise to confusion between them, such similarity may be considered material, even if there are some partial differences. This is because consumers are often not afforded the opportunity to conduct a careful and direct comparison between the two marks; rather, they rely on the mental image and general impression retained in their memory.
Another important criterion is the verbal and phonetic criterion, which concerns the manner in which the mark is pronounced, its auditory impression, and its verbal meaning. Similarity in pronunciation or phonetic rhythm may lead to confusion between two marks, even if their spelling differs, particularly where the marks share similar articulation of letters, phonetic structure, or overall auditory impression.
When applying this criterion, it is necessary to distinguish between common terms and distinctive or coined terms. A common term is a word commonly used by the public or ordinarily used to denote a general meaning or to describe goods or services. Such a term may not be monopolized or granted exclusively to one market participant, as doing so may restrict lawful competition and prevent others from using words necessary to describe their goods or services. By contrast, a distinctive or coined term is one that possesses a distinctive character and is not commonly used in ordinary language. It is therefore more capable of performing the function of a trademark by distinguishing the commercial source of goods or services, and accordingly enjoys broader protection where the requirements for registration and protection are satisfied.
The class or nature of the goods and services is also an influential criterion in assessing similarity, as trademarks are registered in respect of specific classes of goods or services. The likelihood of confusion increases where the goods or services distinguished by the two marks are similar in nature, purpose, target audience, or marketing channels, in a manner that may lead consumers to believe that there is a commercial connection between the owners of the two marks. Conversely, the effect of similarity may be weakened where the two marks are used in distinct fields in which consumers would not ordinarily expect any commercial association between them.
As for the color criterion, its significance arises where color constitutes an essential element in the composition of the mark or one of its most prominent distinguishing features. A high degree of similarity in the colors used may strengthen the likelihood of confusion, particularly where it is accompanied by similarity in the overall appearance, design, or the manner in which the products or their packaging are presented. Accordingly, color is not always assessed in isolation, but rather according to the extent of its prominence and its effect on the overall impression of the mark.
In light of the foregoing, the assessment of similarity between trademarks is not based on a single isolated criterion. Rather, it is carried out through a comprehensive and integrated assessment that takes into account the totality of the elements comprising the mark, the nature of the goods or services, the relevant consumers, and the circumstances of trade in the market. These criteria are not exhaustive; rather, they represent the most prominent guidelines that may be relied upon when assessing the degree of similarity and the likelihood of confusion or misleading the public.
The importance of these criteria lies in the fact that they provide an objective framework for assessing similarity between trademarks, thereby contributing to the protection of trademark owners’ rights, preventing the unlawful exploitation of acquired commercial reputation, enhancing consumer confidence, and supporting a more transparent and stable commercial environment.
Mr. Osama Al-Khudairi
Attorney at Dhamanah Law Firm and Legal Consultations
