Similarity of signs

Similarity of signs is the comparison between an earlier trade mark and a contested sign, intended to determine whether their resemblance may give rise to a likelihood of confusion or, for a trade mark with a reputation, a link in the mind of the public. It is one of the factors in the global assessment required by Article L. 713-2 of the French Intellectual Property Code, Article 9 of Regulation (EU) 2017/1001 and the case law of the Court of Justice of the European Union.

The three levels of comparison

The comparison is made at the visual, phonetic and conceptual levels. Visually, the length, structure, common letters and their position are examined, together with shapes, colours and arrangements for figurative signs. Phonetically, what counts is the number of syllables, the rhythm and the opening and closing sounds, the public generally paying more attention to the beginning of signs. Conceptually, the signs are compared by the meaning they convey to the relevant public, a sign with no meaning being incapable of conceptual similarity with another. The weight of each level depends on the marketing conditions: the visual aspect prevails for goods bought in self service, the phonetic aspect for goods ordered orally.

Overall impression and dominant elements

The signs are compared as a whole, as filed and not as used, save in infringement actions where the actual use of the contested sign is taken into account. The overall impression may nonetheless be dominated by one or more components, and distinctive elements carry more weight than descriptive or weakly distinctive ones. The incorporation of an earlier trade mark within a composite sign, where it retains an independent distinctive role, may be enough to create a likelihood of confusion even if it is not the dominant element. A clear conceptual difference may neutralise visual and phonetic similarities where at least one of the signs has a clear and specific meaning for the public.

Application in litigation

The analysis of the similarity of signs is a question of fact within the discretion of the trial judges, which must nonetheless follow the method described on pain of being overturned. In practice, the comparison concludes with a degree of similarity, low, average or high, at each level and then overall, which is then combined with the similarity of goods and services and the distinctive character of the earlier trade mark under the principle of interdependence. Identity of signs, which opens the door to double identity, is found only where the sign reproduces, without any modification or addition, all the elements of the trade mark, or shows differences so insignificant that they go unnoticed.

Key points

Signs are compared visually, phonetically and conceptually, as a whole, giving greater weight to distinctive and dominant elements and taking account of how the goods are purchased. A clear difference in meaning may neutralise resemblances in form. Before choosing a sign, it should be tested against prior rights at all three levels, starting from the imperfect picture the consumer keeps of it.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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