This decision recaps and applies the case law surrounding the marks-similarity enquiry.
A2 filed a consolidated opposition against Nestlé’s trademarks (Trademark Application No. 40201926155W) and (Trademark Application No. 40201907176S) (collectively, the Application Marks), relying on A2’s own registered trademarks for . A2 unsuccessfully argued that a likelihood of confusion would arise between A2’s trademarks and the Application Marks, and that Nestlé was liable for passing off.
The Principal Assistant Registrar’s (PAR) decision issued on November 30, 2022, focused on A2’s word mark as the mark which was most similar to the Application Marks.
The PAR reiterated the following principles for the marks-similarity evaluation:
- Based on the unique circumstances of the case, the court will evaluate the visual, aural, and/or conceptual similarities between competing trademarks to determine their similarity.
- Not all three similarities will receive equal weight, nor must all be made out.
- The court determines similarity based on the average consumer’s imperfect memory, by assessing the competing marks mark-for-mark. The court does not compare the competing marks side-by-side, nor does it scrutinize details excessively.
- The court also concurrently considered whether the earlier mark is distinctive, as follows:
- It has inherent technical distinctiveness if it is able to distinguish the goods or services of its proprietor from another trader.
- It has nontechnical distinctiveness if there is a dominant, memorable component that stands out in the average consumer’s recollection.
The PAR’s Assessment
The PAR first held that A2’s mark, being an unadorned word mark, had a low level of distinctiveness, and it found the marks visually dissimilar. The “ATWO” element in the Application Marks would be perceived as a meaningless and invented word distinct from “A2.” Because of the teardrop-shaped devices and additional words in the Application Marks which viewers would not ignore, “ATWO” was not the dominant element.
The marks were also aurally dissimilar. The syllable “A” in “ATWO” would be pronounced in the same manner as the same syllable in “afar,” rather than like the letter “A” in A2’s mark.
The marks were conceptually neutral as they consisted of invented words and the devices in the Application Marks carried no particular concept relating to the Applicant’s goods.
The marks were dissimilar, hence both of A2’s grounds failed. The Application Marks proceeded to registration.
This article was first published by the International Trademark Association on inta.org.