One needs a trademark registration to make their business distinctive in the marketplace and build substantial brand value. It can be challenging to create a distinctive and appealing mark. The Federal Law on Trade Marks (No. 36 of 2021) (hence referred to as the “UAE Trademark Law”) protects trademarks in UAE. All trademarks registered in UAE are protected against infringement and abuse under the Trademark Law.
In light of this, one must abide by the rules established by the UAE Trademark Law while developing a trademark to distinguish one’s products or services from those of rivals. Making sure that one’s mark differs from an already existing mark is the primary challenge when seeking to register a trademark. Article 3(11) of the UAE Trademark Law addresses these circumstances by prohibiting the registration of trademarks that are similar to or identical.
Identical Trademarks: What Are They?
Any mark that is a copy of an existing registered trademark is categorized as identical. A trademark need not be a replica of another mark to be considered identical. The mark will be regarded as the same if all of its components are comparable or if, when taken as a whole, it has distinctions that, to the typical person with impaired memory, would be unnoticeable.
What Are Similar Marks?
Identical trademarks may be confused with another existing mark. Here, “similar” should be used to mean “deceptively identical.” It refers to a mark sufficiently similar to another that may easily mislead or fool a typical customer. Whether this amounts to a reasonable misunderstanding may be raised since the application examiner, in this case, will only consider the “probability”.
Legal Provision relating to Identical or Similar Trademarks under UAE Trademark Law
Article 3 (11) of the UAE Trademark Law states that the following shall not be considered or registered as a Trademark or a part thereof:
A Trademark that is identical or similar to another Trademark previously filed or registered by a third party for the same goods or services or related goods or services if the use of the Trademark to be registered would create the impression that they are linked with the goods or services of the registered Trademark owner or leads to harm his interests.
How to Identify Trademark to Be Registered is Not Identical or Similar:
When you apply to register a trademark, it will go through many rounds of review. Here, the Trademark Officer (examiner) will carefully examine both the mark and the application process.
Likelihood of Confusion
The most crucial factor in deciding whether a trademark is identical or similar to one already registered is the likelihood of confusion. To establish trademark infringement, courts give the likelihood of confusion great importance. The public is more likely to need clarification on one mark with that of another company if there is a larger potential for misunderstanding. To succeed in a trademark infringement action in court, you must demonstrate the probability of confusion.
There are four key aspects to consider when that the trademark to be registered is not identical or similar i.e. similarity of the Goods or Services, sound, meaning, and commercial impression. Before deciding whether confusion is probable, courts carefully consider these and other criteria. To establish the risk of misunderstanding, courts look at the following categories of similarities:
1. The similarity of the Goods or Services
It is crucial to note the relationship between the relative proximity of the products or services and the resemblance of the two brand names. Less overlap between the two marketplaces is possible the more distant the products and services are from one another. The likelihood of misunderstanding is more significant for products like computer software and accessories that will likely draw comparable clients. In this situation, there would need to be more substantial differentiation between the brand names.
2. Similarity of Sound
If two trademarks share a word or phrase that sounds similar when spoken, the trademark examiner will deem them to be confusingly similar. The examiners adhere to a broad guideline that clarifies spotting infringement even if there is no correct way to pronounce a trademark. This criterion makes sense since no one can foresee how the general public would pronounce a specific word or phrase connected to a trademark. For instance, while speaking the phrases, the trademarks NOKIA and NOKYIA sound confusingly similar.
3. Similar Meaning
The probability of customer misunderstanding increases when two trademarks have similar meanings and the products or services they stand for are comparable. For instance, if you attempt to promote a computer device under the name “Lenavo,” you will get a stop-and-desist notice. Customers can mistake “Lenavo” PCs for “Lenovo” computers.
4. Commercial Impression
A trademark’s commercial impression will be examined in various ways to see if it is likely to confuse. It would be determined that there would be confusion if two trademarks gave off the same commercial image. It might be based not just on similarities in appearance but also on meaning or sound. To detect trademark confusion by commercial impressions, speak with UAE trademark agents.
How May Farahat & Co. Help You?
It takes practice to compare trademarks for similarity, but we have trained trademark experts adept at spotting trademark infringement. After years of using trademark law, our trademark experts have mastered the competence. Feel free to contact one of our UAE’s top trademark experts if you’re interested in a trademark consultation.