Similarity of trade marks is a tricky issue. After all, one man’s leaping cat is another man’s sleepeh kitteh and either way, there has been a wealth of guidance, legislation and case law regarding what is and is not similar to, well, just about anything else.
But how similar is too similar, and where do we draw the line on colours and shapes?
If a company has a distinctive mark which features a simple symmetrical geometric shape and another company begins using the same shape, in the same colour, I think we can agree we have a pretty clear-cut case of infringement.
If that second company then slices its mark in half, I think most observers would say their new mark (especially if it remains in the identical colour) is still infringing.
But what then if the infringer bows to pressure from the original company and agrees to change the colour of its new half-logo. How much of a change is reasonable?
Most brand owners I am sure, would want to see a move from one colour to another; two different colours, not two different shades, not just two Pantone numbers apart.
I certainly had a change from green in mind. To yellow perhaps, or orange? There are a lot of colours that aren’t green after all. But no, green it was. A lighter green sure. But marginally. A different-on-screen-but-print-it-out-and-you-can’t-really-tell-the-difference shade of green.
Now colour is tricky. I’m sure the IT/design purists will tell you that there is no such thing as identical colours when you’re comparing screenshots to posters, to letterheads to multi-million pound rebranding campaigns.
Beyond that, even in real life, we can say that both cars above are green; but are they the same green? Are they an identical green? Are they a similar green? Well yes they are, but are they an identical or a similar green for the purposes of s5(2) of the Trade Mark Act 1994?
So here’s the rub, when is a colour not identical? Is racing green still racing green when it’s Pantone 553, or Pantone 555?
Among the many “Dangerous Intellectual Property Myths” that Taylor Wessing launched this time last year was the oft-quoted “it’s not infringement if it’s two Pantone shades away from a coloured trade mark or design”. As TW said themselves:
“two shades is not much of a change. It is unlikely to turn a confusingly similar logo into one which does not cause a likelihood of confusion.”
So that clears that up. But what about three shades? Five shades? Ten shades? Is there a magical dividing line where “confusingly similar” becomes “not at all alike”? Perhaps known only to a select few Court of Appeal judges and some in-the-know members of OHIM’s Opposition Division?
Of course there isn’t; it is well-received in the UK that marks must be compared on the basis of their visual, phonetic and conceptual similarity. Consumers might view marks as a whole, but us dispassionate lawyers must focus on the distinctive and dominant components of the two marks.
So while phonetics might not count for much in this instance, we can still see that two marks which consist of an identical shape (cut in half in one representation) in the same shade of dark green will still be confusingly similar for the purposes of European trade mark law.
But will this convince an opponent to substantially change the colour of their mark? Will it hell.