‘That’s Just Semantics’ - but Semantic Similarity in Trademarks is a Serious Matter
In the late nineteenth century the word ‘semantics’ alluded to ‘semiotics’, which is a seventeenth century philosophical theory that covers the connection between signs and sign-using behavior. Today, semantics are mostly encountered when talking of words and the intended meaning of words.
Shane Steinert-Threlkeld, Assistant Professor in Linguistics at the University of Washington defines semantics as: "The scientific study of meaning as expressed in language. Usually, this means doing things like explaining formally under what conditions sentences in natural languages are true or false, or when one sentence implies or presupposes another”. And, in the world of trademark law ‘semantic similarity’ refers to a similarity based on meaning rather than on form.
The aspects of similarity
The acquisition of trademark registration gives the owner the right to prevent similar trademark applications, which will lead to a risk of confusion among consumers. In general, the similarity of a sign can be derived from visual, phonetic or conceptual (including semantic) aspects.
When evaluating any risk of confusion with trademarks, an overall assessment also takes into account many other relevant factors, including the sophistication of consumers and the distinctiveness of the mark. To clear and protect your trademarks effectively it is therefore crucial to utilize a legal tool during both trademark clearance and watching services which understands and duly takes all of these aspects into account.
Conceptual similarity in the EU
The aspect of conceptual similarity has a difficult role in the overall assessment of risk of confusion. Conceptual similarity between signs with similar semantic content may give rise to a likelihood of confusion. However, identification of conceptual similarity must be followed by a careful legal assessment - as the conceptual difference between the signs may or may not be sufficient to neutralize any visual and phonetic similarities. In other words, this aspect may increase, decrease or negate the risk of confusion - in spite of any phonetic and visual similarity/dissimilarity between signs.
One aspect of conceptual similarity derived from similar or comparable content can been seen when examining translation equivalents. An example of this can be seen in the decision regarding EAU PRÉCIEUSE vs NUIT PRÉCIEUSE before the EUIPO.
In this case the two trademarks were not found to be similar, a decision that is heavily based on conceptual differences. Although as per the phonetic aspect, the subject trademark’s longest word ‘précieuse’ is identical, the length of the word ‘précieuse’ taken by itself, was not evaluated as creating a risk of confusion among consumers. In the decision, it has been considered that it is the noun EAU and NUIT (rather than the adjective) which determines the conceptual perception of the signs at issue, namely EAU PRÉCIEUSE and NUIT PRÉCIEUSE.
Thus this difference has been defined by a conceptual comparison. As the adjective ‘précieuse’ merely qualified the nouns found at the beginning of the signs - in the subject dispute, these nouns are different. Here conceptual similarity has been counted against the existence of a likelihood of confusion.
However, a different decision shows a vice versa effect of conceptual similarity when assessing likelihood of confusion. The dispute between RED BARON and BARON ROJO trademarks is a good example of this.
OHIM, Opposition Division, (BARON ROJO (figurative)/ RED BARON) 3111/2000, 21 December 2000
The Opposition Division held that a Spanish consumer would associate the words RED BARON with the words BARON ROJO as “red” is a common English word, and Spanish consumers would be familiar with this word. Accordingly, the marks were held to be conceptually identical and a likelihood of confusion was found.
A similar NameCheck search on the TrademarkNow platform
Slogan similarity in 15 seconds
Similarity derived from semantic meaning is just as important for slogan trademarks. We ran a similarity search on the slogan “THE KING OF BEERS” and in just 15 seconds we found semantic trademarks which may pose a risk. Here is one of them:
In a recent decision dated 3 October 2019 between the trademarks Carnilove and Meetlove the EU General Court found that the BoA erred in its assessment on the examination of conceptual similarity of the signs at issue. In the decision the evaluation by the court was made by breaking up the components of the trademarks as meat-carni-love. Accordingly the EU General Court found a certain degree of conceptual similarity due to the aspect of similar meaning.
NameCheck running a similar search of component words
The importance of similar concepts in the US is even more crucial
Conceptual similarity (namely equivalent translations) becomes even more important before the USPTO due to the U.S. trademark law doctrine of foreign equivalents regulation. Under the doctrine of foreign equivalents, a foreign word (from a language familiar to American consumers) and the English equivalent may be held to be confusingly similar.
For example in re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) the word LUPO for men’s and boys’ underwear, and WOLF for use in the design of various clothing items, was held likely to cause confusion, because, inter alia, "LUPO" is clearly the foreign equivalent of the English word "WOLF", as denoted in NameCheck:
Stay on top of conceptual similarity
Regardless of where your trademarks are filed, conceptual similarity can play a crucial part in spoiling successful trademark management. Conceptual similarity needs to be evaluated on a case by case basis, together with phonetic and visual similarity!
The semantic identity of the words is becoming more and more important in the evaluation of risk of confusion and this highlights the importance of catching conceptual similarities amongst new trademark applications.
You have seen, in our examination of EU and U.S. case law, that the threshold of conceptual similarity can differ from country to country and it follows that the U.S. has higher rejection rates for translated equivalents due to their doctrine of foreign equivalents regulation. Yet regardless of territory, the disputes around identical/similar meanings are all directly linked with this type of conceptual similarity and have been found to create risks of confusion.
Smart semantic similarity
Thus AI which has the ability to recognize semantically similar trademarks - even when there is no visual or phonetic similarity at all - will help trademark professionals to evaluate the level of risk to be taken. In other words, companies running clearance searches need to analyze more than a simple comparison of signs, including (but not limited to) litigiousness assessment, semantic similarity reporting, brand strength and word meaning tools.
Our NameCheck tool finds and analyzes all identical and similar marks across specified products and services, relevant classes, and registries to find possibly infringing registrations. And, NameCheck delivers a report ranked and analyzed in order of threat to you in seconds.
Your intelligent trademark clearance just got more powerful.
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