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Criteria for Assessing the Similarity of Trademarks

Criteria for Assessing the Similarity of Trademarks
Nowadays, the trademark office is increasingly strict in examining new trademarks applications. According to Article 30 of the current Trademark Law (2019), where an application for trademark registration does not comply with the relevant provisions of the Trademark Law, or is identical with or similar to another person’s trademark registered under the Law which, after examination, has been preliminarily deemed to offer the same type of or similar commodities to customers, the Trademark Office shall reject the application.

Therefore, whether the trademark is “similar to and identical with another person’s registered trademark + commodities of the same or similar type” becomes the key as to whether the trademark can be registered successfully. However, when determining whether two trademarks are similar, we must not consider the elements of the trademarks solely. We must also take into account the goods or services designated by the companies, as well as the popularities of the allegedly similar trademarks to conduct a comprehensive analysis.

(1) The standard is the degree to which the trademark can arouse public awareness;
(2) It is necessary to compare the trademarks as a whole and the major parts of the trademarks (such comparison must be made separately where there are two or more trademarks which are allegedly similar)。
(3) The prominence and visibility of the trademark should be considered if necessary.
(4) The scope of products and services protected by a registered trademark should also be considered.

In other words, the scope of examining similar trademarks during registration includes not only direct aspects such as fonts, pronunciation, meaning, composition, color tone, appearance, arrangement and combination of words and graphics, outlook, shape and appearance of three-dimension logos, colors or color combination. Consumer’s understanding (or misunderstanding) or a particular trademark when purchasing the goods or services will also be examined.

The process may involve the examiner’s exercising of his own understanding and opinion, such that the process may vary a lot for different cases. Nonetheless, no matter how difficult the registration process may seem, not only does registering your trademark as soon as possible provides your products and services with adequate intellectual rights protection; but also your marketing and promotional means.

Benny Kong & Tsai © 2023

Benny Kong & Tsai, Solicitors

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