ECJ case law has established that, in order to determine whether two trade marks are similar, an overall assessment must be made of the visual, phonetic and conceptual similarities between the marks, based on the overall impression given by the marks, bearing in mind their distinctive and dominant components.

This must be judged from the point of view of the average consumer in the country or countries where the earlier mark is registered, who are deemed to be reasonably well informed, observant and circumspect.

In practice, this means that, for example, where there are strong phonetic and or conceptual similarities between two marks, these may neutralise visual differences so as to render the marks similar. However, even where two marks are phonetically similar, but not visually or conceptually similar, they may not be held to be similar for the purposes of trade mark law if they are used on goods which are marketed in such a way that, when making a purchase, the relevant public perceives the mark visually. This might apply in the case of clothing but would be less applicable to alcoholic drinks, which are often ordered verbally.

Equally, strong differences in one or two aspects may counteract similarities for example, strong conceptual differences between two marks may counteract any visual and phonetic similarities between them.

By Jane Coyle