Trademarks must not be confusingly similar to earlier marks or company names

A trademark is liable to be confused with another trademark if it is identical or similar and, additionally, if it covers identical or similar goods or services compared to an earlier registered trademark or the line of business of a company name.

We always assess the risk of confusion individually and consider your trademark as a whole as well as all the relevant circumstances. A general guideline is that any two trademarks are liable to be confused if they are so similar that an average consumer can be assumed to confuse them with each other.

Confusingly similar marks which prevent the registration may be

  • domestic trademarks and trademark applications
  • EU trademarks and trademark applications
  • international registrations designating Finland (WIPO)
  • domestic company names applied for entry or entered into the Finnish Trade Register

If trademarks cover similar goods and services

For example, you apply for a Lion trademark for jewellery in class 14. The Trademark Register already contains a Lion trademark which is registered for watches in class 14. The marks are completely identical and the goods are very similar. It is very usual that a manufacturer in the jewellery and watch business makes both products. Consequently, consumers may well assume that both Lion watches and Lion jewellery come from the same company. The marks are therefore liable to be confused.

If trademarks cover different goods and services

Trademarks are usually not considered confusingly similar if they cover different goods or services: The Eskimo trademark for ice cream in class 30 is not liable to be confused with another owner's earlier registered trademark Eskimo which covers clothing in class 25. Although the marks are identical, there is no risk of confusion because the goods are completely different from each other. Average consumers are not likely to assume that the Eskimo ice cream comes from the same manufacturer as the clothing brand they are familiar with.

There is an exception to this main rule. Trademarks with a reputation can be protected against a new mark even if they were registered for different goods and services. Read more about trademarks with a reputation.

If trademarks sound similar

When assessing the risk of confusion, the PRH considers also the phonetic similarity of the marks.

For example, “Yucca" might be liable to be confused with Yukka or Yucc@ already registered for similar goods.

If trademarks are not identical but still confusingly similar

Trademarks may be confusingly similar even if they are not identical. When assessing the risk of confusion, it may often be necessary to consider which parts of the marks are relevant for the comparison, in other words, which parts are strong (distinctive) or weak (non-distinctive).

For example, “Yucca" has been registered for clothing and footwear in class 25. In principle, the trademark would be liable to be confused with a later trademark application for “Jeans Yucca" for trousers and jeans. The word “Yucca" is a strong and therefore distinctive part of both marks. The word “Jeans" cannot be protected because it only describes the products, that is, trousers. As a consequence, the trademark “Yucca" would be an obstacle to the application for “Jeans Yucca". Registering the new mark would be possible only with the consent of the owner of the earlier mark.

Trademarks with a reputation

Trademarks with a reputation may constitute an obstacle to the registration of non-identical or dissimilar goods or services. This exception aims to protect widely known trademarks against damage to and exploitation of their reputation. Read more.

Consent removes the obstacle

The obstacle of confusing similarity can be overcome if the owner of the earlier mark or company name gives consent for the applicant’s mark to be registered. The obstacle can also be overcome if the applicant reduces the scope of the list of goods or services for the mark so that the application no longer includes similar goods or services compared to the earlier mark.

Search for confusingly similar marks online

You can find out about possible confusingly similar trademarks on various free databases. Read more.

Transfer of information from the WIPO and EUIPO registers

The International Trademark Register maintained by the World Intellectual Property Organization (WIPO) in Geneva and the EU Trademark Register maintained by the European Union Intellectual Property Office (EUIPO) in Alicante may contain trademark registrations or applications which we have not yet been informed about, but which could still be an obstacle to your application because they have earlier priority dates. We cannot take them into account when we are examining your application for obstacles during the application process.

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Latest update 30.12.2016