Mikołaj Lech

patent attorney

A lawyer, who specializes in industrial property law, combating unfair competition and copyright. Thanks to work in Patent Agency he has a contact with the current problems of entrepreneurs.
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15 Feb

Trademark similarity: When does it lead to an infringement of the law?

While on vacation in Bulgaria, I visited toy stands. Honestly. In my life I have not seen so many fakes of LEGO bricks. I thought that in this example I will tell you what trademark similarity is. This is important because similar signs infringe the law. And there are some consequences.


Examples of counterfeit LEGO bricks.

Everyone knows the LEGO brick producer.

You had the opportunity to read about this brand while trying to register a single brick as a trademark. Recently I read that this brand has record high profits. No wonder that many “creative entrepreneurs” are trying to get something out of this cake.

I personally came across many examples of naive attempts to bypass the right to the LEGO trademark.

Original:

trademark similarity

Imitations:

trademark similarity

trademark similarity

trademark similarity

trademark similarity

Bricks referring to the LEGO stylization:

How do you assess the trademark similarity?

If you use a sign similar to a previously registered trademark – you are breaking the law.

Of course, the devil is in the details.

After all, the similarity of trademarks may be larger or smaller. Is changing one or two letters enough to get around the law?

The trademark similarity is tested on several levels:

  • phonetic (we compare whether they sound similar);
  • graphic (we compare their appearance);
  • semantic (we check whether they are not e.g. synonyms).

The first 5 examples differ clearly on the phonetic level. It seems to me that the semantic level does not exist at all. However, if we compare the graphics of these markings, we will see that it is very similar to LEGO graphics.

I have no doubt that the court would find a infringement of law here. It is enought to show similarity on one of the above levels.

I would not be so sure about the remaining examples. Of course, there are some common elements like red background and white symbols. However, I see a large number of weirdos that can eliminate the risk of confusion.

Assess whether trademarks can be misleading.

In essence, a trademark is to distinguish goods / services of one entrepreneur from the same goods and services of another entrepreneur.

The point is therefore to prevent consumers from being misled as to the origin of the goods.

It is from this perspective that the trademark similarity should be assessed.

Of course, any trademarks comparison must start with a comparison of goods and services. By registering a mark, an absolute monopoly on the name is not obtained. This legal monopoly applies only to the goods and services specified in the application. There may be several companies on the market that use the same name. Everything will be legal as long as they operate in different branches.

Example:

The Feniks tattoo studio will not be able to prohibit the use of the same name for a baker’s shop. There is no danger that a person who wants to get a tattoo by mistake will buy a breadroll.

Or vice versa 🙂

In the context of the above, the first packaging of bricks is misleading. They were sold at stands, among other perhaps original toys. There is no rule saying that differences in signs must occur in 5-10 or 20%. Everything is assessed from the point of danger of so-called confusion.

Example:

The degree of consumer attention will be different depending on the product they want to buy. The consumer will have less attention when buying a candy bar than, for example, an agricultural tractor for 75 000 EUR.

LEGO Guy as a shape mark.

I don’t know if you know that the LEGO Guy has been protected as a shape European Union Trade Mark since 1996. Recently, the dispute to invalidate it’s protection ended in failure.

This means that identical or similar figures cannot be used to mark games and toys.

And here it gets interesting, because regardless of the logo, each pack of bricks has a drawing of a very similar LEGO Guy. I dare say that due to the popularity of brickks, a guy can be a reputable sign. And this means that the similarity is judged more severely than with ordinary trademarks.

Thus, even if several of the above manufacturers would defend themselves that their logo is not misleading, it will not be so easy with the figure of the Guy.

Summarizing

When I work in a Patent & Trademark Agency I happen to stand on different sides of the barricade.

Once I have to attack indicating that someone uses a similar mark. At other times, I defend clients against such accusations. I have noticed quite a common belief among people that a small change is enough to bypass the protective law.

And this is not true!

Changing one or two letters is relatively small.

Well, unless the word counts only 3.

Most often, adding words that are not very distinctive will not help either. Examples include “super”, “turbo” or “light”. The differences in the trade mark must be significant enough to eliminate the risk of confusion.

That’s why I wrote that the first blocks are a naive attempt to circumvent the law.

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl
Mikołaj Lech

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