Identical and Similar Trademarks

It’s crucial to understand the differences between identical and similar marks as a trademark needs to be distinct in itself and any similarities or identical properties to an existing mark can result in the trademark getting rejected.

The easiest way to understand the criteria for similar or identical trade marks is to look at trademarks as a common prudent person. Would this common person be confused or not. It is determined BY SIGHT as well as PHONETIC similarity of the mark, the getup, colour combination, design and artwork of the label, packing material etc.

You looked at two trade marks and you feel that a regular person can be confused with the owners of this two trademarks, that it is more likely that he will think that they belong to one owner.

Now you have to compare a list of goods and services of this two marks. Are they also similar?

Then, without a doubt, you can say that these two trademarks are similar.

To register the mark as a trademark, it has to meet the following criteria:

• It must be distinctive
• It must not be identical or similar to a mark already registered or any pending prior application for registration
• It must not be prohibited by law
• It must be owned by the applicant

To sum up:

• A mark is identical if it recreates existing trademark (or prior trade mark application) without minor modification so a regular person will not notice any difference.
• A mark is similar if it is so nearly resembling that other mark (or prior trade mark application) as to be likely to deceive or cause confusion.

The Important thing to understand is that confusion could be probable. The Registrar decides whether there is such possibility or not.

Also Read: Trademark Infringement in India

Our advice is to conduct a trademark search for the relevant classes before filling the application. This advice will help you register your trademark and avoid some legal problems in the future, such as trademark infringement.

The Trade Marks Act, 1999 provides specific provisions of what constitutes trademark infringement. As per Section 29 of the Act, a registered trademark is said to be infringed in the following circumstances:

• If a mark which is identical with, or deceptively similar to, the registered trademark is used in relation to the same or similar goods or services
• If the use of the identical/similar mark for identical/similar goods or services is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark
• If the use of the identical/similar mark for different goods or services is likely to take unfair advantage of or be detrimental to the reputation of the registered trademark in India, cause confusion on the part of the public or which is likely to have an association with the registered trademark