Introduction
This work aims to offer some elements to carry out the analysis of the risk of confusion between two brands.
Trademarks constitute an important modality within Industrial Property. The emergence of these is given by the need felt by the human being, since ancient times, to mark the objects that were his property, in order to differentiate them from those belonging to other members of the community to which they belonged.
In ancient Greece and Rome, as well as Mesopotamia and Egypt, trademark symbols were used to distinguish their products, these being mainly ceramics and food. The symbols were also used to identify the shops.
During the Middle Ages, the use of trademarks decreased markedly. The cause of this, among other factors, was due to the fact that artisanal trades were subjected to collegiality (this being the precedent of the guilds), and the fact that the population of the cities, which has the predominant role as a center of consumption, decreased significantly at that time.
However, with the arrival of the Renaissance and the series of economic, social, political, ideological and cultural changes that Europe faced during it, it brought about the resurgence of the practice of the use of trademarks, one of the most prominent examples being the use family shields to identify the commercial activity to which said family was engaged.
The constant development of commercial activities brought with it the drafting and subsequent implementation of the first trademark laws, an example of which is: the English Law of 1266, regarding the bakery company and the decree of the city of Amines in 1374, linked to the marking of goods to guarantee their origin.
Although between the 17th and 18th centuries the use of trademarks by factories began as indicators of quality and origin, with the arrival of the early 19th century of the Industrial Revolution, in Great Britain first and the rest of continental Europe afterwards, the largest set of socio-economic, technological and cultural transformations in the history of humanity occurs. The Industrial Revolution, a historical period between the second half of the eighteenth century, constituted a significant change in terms of the production process, which brought about the massive distribution of products, given the increase in production capacity, thus arising the urgent need of using brands as a differentiating entity for products within a common market.
From that moment, the use of brands continued to grow, since their usefulness as a differentiating agent of products and services in a common market became increasingly necessary, their use being practically indispensable in the national and global market of our days.
The brand, a distinctive sign par excellence, has had many meanings, an example of which is given by the authors, Lamb, Hair and McDaniel, when they define the brand as »a name, term, symbol, design or combination of these elements. It identifies a seller's products and distinguishes them from competing products. »For the author Richard L. Sandhusen,« a brand is a name, term, sign, symbol, design or combination thereof, that identifies the products and services and helps to differentiate them as belonging to the same supplier; Brands can be local, national, regional or global in scope. ” Another interesting definition is provided by Laura Fischer and Jorge Espejo, when she defines the brand as «a name,symbolic term or design that serves to identify the products or services of a seller or group of sellers, and to differentiate them from the products of competitors ", while for its part,Philip Kotler believes that “whether it is a name, a trademark, a logo or another symbol, a brand is essentially the promise of a selling party to consistently provide buyers with a specific set of characteristics, benefits and services ».
Notwithstanding the foregoing, all these concepts coincide the fact that the brand is a sign used to identify and distinguish products in a common market, thus avoiding consumer confusion, which could occur in a market that has infinity of similar products in appearances. It is the responsibility of the brand to identify its products, differentiating it from the others and indicating that it has unique characteristics, which make it the most suitable for every consumer.
Strong brands are those that are endowed with a high distinctive character. This strength may have its origin in two causes: the intrinsic structure of the sign or the wide diffusion of the brand among the consuming public, this second cause being the one that most contributes to strengthening the distinctive character of the brand.
Cuban law establishes in its Article 3. - 1. that trademarks may constitute:
a) word signs such as letters, words, figures and all combinations of these signs;
b) figurative signs such as images, figures, drawings, symbols and graphics, as well as color, provided it is delimited by a certain shape, and color combinations;
c) mixed signs from the combination of word and figurative signs;
d) three-dimensional shapes, as long as they can be delimited from the product, including packaging, packaging, the shape of the product or its presentation;
e) odors;
f) sounds and combinations of sounds.
Development
Confusion risk concept
According to the dictionary of the Spanish Language, the word confusion can have several concepts, among which stand out: Mix of different things, disorder, lack of agreement and clarity, perplexity, confusion, restlessness, error, mistake. In Industrial Property matters, the risk of confusion is a fundamental figure in Trademark Law, being the mechanism that prevails in various sectors of the trademark system, and one of the basic prohibitions that hinder the registration of a trademark.
The risk of confusion constitutes that phenomenon that takes place in the consumer's mind, by virtue of the coexistence in the market of two identical or similar brands to distinguish identical or similar products or services, given that the consumer has been exposed to the danger of mistakenly believe that these are the same products or services, which expect a set of homogeneous and stable characteristics and a constancy in quality compared to the usual level.
Research method used.
Bibliographic research method of texts, serial and non-serial publications on the subject, digital Internet documents, from different authors from different countries and international organizations, in order to explain current trends in the subject and form a judgment in relation to each one of the topics evaluated.
The risk of confusion in Cuban law.
Among the relative prohibitions that are established in article 17.1 of Decree-Law 203 on Trademarks and other Distinctive Signs of Cuba, are those related to the risk of confusion, being the following:
A sign whose use would affect a previous third party right cannot be registered as a trademark. A previous third party right is understood to be affected when:
"The sign is identical or similar to a registered trademark or in the process of being registered in the country by a third party from an earlier date, for identical or similar products or services, if its use could cause a risk of confusion or association"
"The sign is identical or similar to a trade name, establishment label or business emblem used or registered in the country by a third party from an earlier date, if its use could cause a risk of confusion or association"
Fundamental factors to determine the existence of the risk of confusion.
1) Interference between marks.
2) Interference between products.
3) The degree of consumer attention.
First factor: The interference between the marks.
In order to analyze the possible interference between the marks, one should initially proceed to classify the type of signs in question, since depending on it, this will be the rules applicable to that specific trademark match. The conflicting signs can be denominative, figurative, mixed, three-dimensional, olfactory and tactile. Depending on the classification, the strategy to be followed will be decided.
Examples of comparisons.
If they are two simple denominative signs, which are those that consist of a single word, which in turn can consist of a single syllable, they must be compared with each other according to the guideline of the vision as a whole, that is, on the basis of the totality of the constituent elements of each denomination confronted and without decomposing its unit. Given that this type of trademarks have an elemental and unitary structure, the following doctrine is applicable to them, formulated by the Community Court of Justice in Basis No. 23 of Judgment November 11, 1997 where it states: " the perception of brands that the average consumer has of the type of product or service in question,it is of decisive importance in the global appreciation of the likelihood of confusion. Well, the average consumer normally perceives a brand as a whole, whose different details do not stop to examine ”.
The comparison will be given only between these elements, establishing a comparative judgment of the syllables and letters that make up the word, assessing their impact and the impression produced by the conflicting names for the average consumer.
In this case, special emphasis will be placed on the opposition of the phonemes that are part of the conflicting marks, attending to the classification of consonants and vowels of the Spanish language, according to the way of articulation, so that the combination of phonemes of a The same group will imply a greater probability of phonetic interference.
Jurisprudential criteria of the Spanish Supreme Court. Among the specific guidelines applicable for the comparison of word marks, the Spanish court highlights the following:
A) The identity of the tonic syllables of the brands compared.
B) The arrangement of the vowels in the indicated marks.
C) The relief of the topical factor.
D) The transposition of the elements that make up the comparative denominations.
In the case of two complex word marks, which are those made up of two or more words, the comparison between these marks must be carried out according to the guideline of the vision set out above, which means that the mark must not be disintegrated into its component words, since doing this would mean that the consumer cannot value the brand for its general impression, but instead, focus on quantifiable differences. When analyzing these brands, it must be taken into account that for being exposed daily to the contemplation of a high number of brands, the average consumer of the corresponding market sector will only keep in memory a general and global impression of the denominations confronted.
In the case of two mixed brands, which are those that are made up of a denomination, whether simple or complex, and a figurative or graphic elect, we must start when carrying out this analysis, not only the ruling rule in all trademark matches, that is, the Rule of the overview, but also of the comparison between the marks. One of the ways of carrying out this second analysis is taking into account the Rule of the dominant element according to which, within any trademark set, there is an element that, due to its originality, striking character or situation within the set, causes a certain impression on the mind of the consumer, so that it acquires a supremacy compared to the rest of the elements that make up the brand. While determining the dominant element within a brand is a complex process,There is a judicially and doctrinally recognized theory that states that the comparative analysis of the competing brands must specifically focus on the names that make up the brands, since the distinctive value of the element through which the brand can be expressed without the slightest doubt cannot be unknown. ambiguity, since a graphic on several occasions does not have full expression and the public generally demands the products by name and not by its graphic. The jurisprudential line of the Spanish Supreme Court argues that when the comparison between distinctive signs, the guideline must be applied that the word element prevails, as a general rule, over the graphic or figurative component.
The identity or phonetic similarity of the words is decisive when assessing the risk of confusion that the consuming public could exist, since for the consumer the verbal aspect prevails, since in their eyes the graphic element may appear as an element decorative that plays an ornamental role; and this could cause the consumer a greater risk of confusion.
Second factor: Interference between products.
When carrying out this analysis, consideration should be given to whether the products that seek to distinguish each of the brands do present two characteristics, these being the same nature and the same purpose. If the products of both brands were in the previous situation, then they will necessarily coincide in the market sector and in the same establishments, therefore, the brands would be prone to being confused under those circumstances during their commercialization.
On the subject, Professor Fernández Novoa exposes the following:
"When analyzing the impressions and reactions of the public to the products covered by both brands, two hypotheses are contrasted. The first is that in which the affinities between the products or services confronted are so important that the average consumer could confuse the products or services bearing the priority brand with the products or services bearing the later brand. The second hypothesis is one in which, despite the fact that there is no confusion between the corresponding products or services, these are so related that the average consumer could mistakenly believe that they come from the same company. ”
The Judgment of the Court of Justice of the European Communities of June 22, 1994 refers to this second hypothesis, which states in its section No. 16:
"The law of trademarks aims to protect the owners against the maneuvers of third parties, causing a risk of confusion in the minds of consumers, trying to take advantage of the reputation attributed to the brand. Well, this risk can be created by using an identical sign for products different from those for which a trademark right was acquired (through registration or other form), from the moment the products in question present relationships narrow enough to provoke in the minds of users who see the same sign stamped on said articles, the conclusion that the products come from the same company. The similarity of the products is therefore part of the risk of confusion and must be assessed according to the objective pursued by trademark law.”
Notwithstanding the foregoing, in the event that similar or identical brands protect products in classes that are well differentiated from each other, the application of the Specialty Rule will be possible. This principle is aimed at determining the compatibility of identical or similar signs, when they are applied in sectors of products or services that are different within a given commercial area, that is, it allows identical brands to coexist for different products, provided that they are sufficiently different so that there is no risk of confusion regarding the business origin.
The specialty principle allows a registered trademark to coexist with another trademark of the same or similar denomination, as long as they do not coincide in the same market for products or services. Countless are the examples that could be illustrated to prove this principle, since it is enough that we are in the presence of two registered trademarks in radically different classes and that they will definitely not coincide in the same market sector, so that the possibility of confusion is practically seen removed.
Third factor: The degree of consumer attention.
The risk of collusion should always be established from the perspective of the public of consumers interested in purchasing the corresponding products or services. When analyzing the problem of the risk of confusion, it becomes necessary to typify the figure of the average consumer, who, according to the conception of Spanish and French law, is someone who does not stand out for their particular knowledge, nor for being especially ignorant; This is a person endowed with normal reasoning and perspective skills. For its part, German law states that the average consumer is that person who is not very thoughtful, who ordinarily considers superficial attention to the offer and advertising of products or services and their distinctive signs.
The jurisprudence deals on numerous occasions with this figure and its importance during the process of delimiting whether the mark is susceptible to the risk of confusion. An example of this is the judgment of the Luxembourg Court of July 16, 1998, which ruled in the case of ´Gut Sprengheide GmbHn and Rudolf Tusky against Oberkreisdirektor des Kreises Steinfurt, when the judgment questions whether the name, trademark mention considered could or do not mislead the normally informed and reasonably attentive and insightful average buyer.
Another judgment on the subject is the Judgment of the Court of Justice of June 22, 1999, which ruled the Lloyd Schuhfabrik Meyer & Co, GMBH case against Klijsen Andel BV, when it established that: it is deduced that the perception of the brand that the The average consumer of the product or service category in question is of decisive importance in the global assessment of the likelihood of confusion.
Well, the average consumer normally perceives a brand as a whole, the various details of which it does not stop to examine. For the purposes of this global assessment, the average consumer of the product category is assumed to be an informed and reasonably attentive consumer. Insightful, however, it must be borne in mind that the average consumer rarely has the possibility of directly comparing brands through analysis, but must rely on the imperfect image that remains in memory. It is also appropriate to take into account the fact that the level of care of the average consumer may vary depending on the category of products or service contemplated.
Two particular consumer prototypes, the professional and / or specialized consumer and the elite consumer.
The degree of attention attributable to the consumer who is normally informed and reasonably attentive and insightful is variable. It should be considered higher when the brand differentiates specialized or refined products or services for which a high price is paid, Example (specialized consumer)
The Judgment of the Third Chamber of April 8, 1974, was based on the professional specialization of the consumer, by decreeing that the NETETAL marks (requested to distinguish injection presses of thermoplastic materials) and the previous trademark NESTOR registered to distinguish were not similar machines and tools for wood and metals). The chamber of this court held that the confusion of the purchasers of each of these types of machinery is not reasonably probable, taking into account the professional specialization of the user and even its price.
Example (elite consumer)
The Judgment of the Third Chamber of July 11, 1980 underscores the elite nature of the clientele of products such as wine, differentiated by the contemplated brands that were in dispute. The judgment attributes to this clientele a great sensitivity to differentiate the distinctive signs, exposing that this sensitivity derives from the knowledge that the elite clientele possesses in the art of tasting wines.
conclusion
The risk of confusion brings with it an unfair use of the prestige and fame acquired by previously registered brands, bringing with it the direct effect on the consumer public of the product or service in question, which seeks characteristics and, above all, a specific quality that you will not get from the new brand. This use must be avoided, through a consistent analysis of each brand, taking into account the aforementioned guidelines.
Bibliography
Decree Law 203 on Trademarks and other distinctive signs.
Trademark Law Treaty of Professor Carlos Fernández-Novoa.
The Importance of Marketing by Professor Richard L. Sandhusen.
Marketing by authors Laura Fischer de la Vega and Jorge Espejo Callado.
Social Marketing. Strategies to change the public behavior of Doctor Philip Kotler.
Judgment of the Court of Justice of June 22, 1999, ruling in the Lloyd Schuhfabrik Meyer & Co, GMBH case against Klijsen andel BV.
Judgment of the third Chamber of July 11, 1980.
Judgment of the Third Chamber of April 8, 1974.
Luxembourg Court Judgment of July 16, 1998 ruling in the 'Gut Sprengheide GmbHn and Rudolf Tusky case against Oberkreisdirektor des Kreises Steinfurt.
Judgment of the Court of Justice of the European Communities of June 22, 1994.
Judgment of the Court of Justice of the Communities in Basis No. 23 of November 11, 1997.
