Trade Mark Opposition. Spot the differences: ‘Vysion Ltd’ or ‘Vision Ltd’

July 14, 2009

Are you currently in the process of registering a trade mark for your brand? Everything can be ticking along smoothly until the day you receive a letter from the registry saying that your application has been opposed. What to do next? Pull out, settle or defend to the bitter end? Negotiations are certainly preferable to expensive and unpredictable adversarial proceedings. If you are in this situation first you should understand how opposition proceedings work and second how to defend your application. The following is an example of the procedure that applies to the registration of a trade mark in the EU.

You apply for an EU trade mark, the registry approve your application and publish your application in a journal. Then a company or individual with a registered trade mark sees that your trade mark is remarkably similar to theirs and fears that their customers are about to be hijacked. They file an opposition with the registry within 3 months of the publication.

The registry informs you and if they think the application is admissible then you have a 2 month ‘cooling off’ period to settle with your opponent. If more time is needed, you can apply for a maximum extension of 22 months, provided that both you and your opponent are in agreement. Once the cooling off period has expired, the formal adversarial proceeding commence.

The opponent has a two month period in which to submit further arguments and supporting material based on their initial opposition claim. The trade mark applicant then has a two month period to file its observations in reply to the opponent’s case.  OHIM acknowledges receipt of the documents and bases its decision on the material presented by each of the parties. The decision process takes from couple of months onwards to reach their decision.

The question that may be burning on your lips now is on what grounds can the opponent challenge my trade mark? And how do I counter their attacks? Generally, your opponent will claim that your trade mark is identical or similar to theirs.

As it is more onerous to show that the marks are identical to the point of being symmetrical, your opponent will tend to claim that your trade mark is similar. However, many opponents will still claim the marks are identical in the hope that the applicant will not refute the claims in their response– there have been instances where the failure to file observations against an opponent’s claim that the marks are identical has proven fatal to the applicant’s case.

In instances where the opponent alleges similarity of the marks and goods/services, there are two aspects that your opponent will have to show: visual similarity and market similarity, in other words, the trade marks have to look similar and the trade mark owners have to sell similar goods and/ or services. Further, consumers must be likely to be confused by the existence of both trade marks. Your opponent might claim that consumers would associate your trade mark with theirs.

The strategy here is to assuage you opponent with reassurances that you are not a potential competitor, and that you are operating in distinct markets. Further, visual distinctions, no matter how slight, should be raised to break the linkage between the two trade marks. In all, the trick is to ‘spot the differences’ so that in the eyes of the consumer, the overall impression of the marks is that they are dissimilar to each other.

As an example to elucidate the above points: imagine you are a video production company and want to register a trade mark in ‘Vysion Ltd’ and a tv production company already has a trade mark in ‘Vision Ltd’. They oppose your application claiming that the 2 names are remarkably similar and that their customers are likely to be confused as a result. Clearly ‘Vysion Ltd’ and ‘Vision Ltd’ sound the same, look very similar and both companies seem to be operating in the same media market.  With those set of facts it would be difficult for you to defend your application.

However, if we were to delve into the case with more detail to find out that  ‘Vysion Ltd’ was exclusively producing corporate training videos and ‘Vision Ltd’ was reaching the general public with tv documentaries and tv dramas, then maybe ‘Vysion Ltd’ could defend their application. Although both companies might be considered to be selling within the same class (Class 41), they arguably have very distinct audiences. In conclusion, the key point to retain when defending your application against an opposition is to: ‘spot the differences’.