By Kyaw Kyaw (Dominance Literature)
LIKELIHOOD of confusion is determined from the perspective of an ordinary consumer, not necessarily an expert or sophisticated purchaser. Confusion can exist even if the goods/services are not identical or directly competitive. Ultimately, the concern is that consumers may incorrectly assume there is an association or affiliation between the owners of the respective marks.
The primary purpose of the Likelihood of Confusion provision in trademark law is to prevent consumer confusion in the marketplace. This standard serves to protect both consumers and trademark owners by ensuring that similar or identical trademarks are not used for related goods or services in a way that could cause confusion, mistake, or deception among consumers.
The fundamental goal is to maintain the integrity of trademarks as source identifiers. Trademarks function as symbols that help consumers distinguish the origin of goods or services, and the Likelihood of Confusion standard aims to safeguard this function. When two marks are so similar that consumers might mistake one for the other or believe they share a common source, the likelihood of confusion exists.
Addresses the issue of the likelihood of confusion in trademark registration. This section is a crucial component of the trademark law of Myanmar and is aimed at preventing the registration of trademarks that are likely to be confused with existing trademarks.
Under the Trademark Law of Myanmar, which came into force in April 2023, the concept of likelihood of confusion plays a crucial role in determining whether a trademark can be registered or whether it infringes upon an earlier mark.
Absolute Grounds for refusal of registration of trademark, consisting of the total or partial reproduction or imitation of a flag, armorial bearings, or other emblems adopted by a State or an international intergovernmental organization; an official sign or hallmark indicating control and warranty adopted by a State; abbreviations and names of an international intergovernmental organization, unless authorized by the competent authorities of the State or of the relevant international intergovernmental organization; (Section 13 (f) of the Trademark Law of Myanmar)
Specifically, Section 14 (a) and (e) states that a trademark application may be refused registration if it is likely to confuse with a prior registered or pending trademark.
Relative grounds for refusal of registration consisting of the being identical with or similar to a registered mark or earlier applied mark or priority claimed mark in the name of a different person, the goods or services in respect of which registration has been requested are identical with or similar to the goods or services for which the earlier mark has been registered or applied for and the use of the sign would cause a likelihood of confusion with that mark by the users. (Section 14 (a) of the Trademark Law)
Relative grounds for refusal of registration consisting of the being identical with or similar to a well-known mark, the goods or services in respect of which registration of the sign is applied for are identical with or similar to the goods or services for which the well-known mark is used and the use of the sign would cause a likelihood of confusion with that mark. (Section 14 (e) of the Trademark Law)
The Intellectual Property Court shall presume that the use of a sign which is identical with or similar to an unregistered well-known mark in relation to goods or services which are identical with or similar to those, without the consent, is likely to cause confusion to the public. (Section 78 (b) of the Trademark Law)
A framework used by the United States Patent and Trademark Office (USPTO) and courts to assess the likelihood of confusion between two trademarks. The analysis involves considering a set of factors, often referred to as the DuPont factors, to make a comprehensive evaluation. These factors help in determining whether the use and registration of a later-filed mark are likely to cause confusion with an earlier existing mark.
EI DuPont de Nemours & Co, 476 F.2d 1357 (CCPA 1973 held that
1. Similarity or Dissimilarity of the Marks: Examines the visual, phonetic, and conceptual similarities between the marks in their entireties.
2. Similarity or Dissimilarity of the Goods or Services: Analyzes the nature of the goods or services associated with the marks. If the goods or services are closely related, there is a higher likelihood of confusion.
3. Fame of the Prior Mark: Considers the level of recognition and reputation of the earlier mark. A famous mark is afforded greater protection against similar marks.
4. Similarity or Dissimilarity of Trade Channels: Looks at the distribution channels and marketing channels used for the goods or services. If the goods or services are sold through similar channels, confusion is more likely.
5. Conditions and Degree of Purchaser Care: Assesses the degree of care that consumers are likely to exercise when purchasing the goods or services. Higher-priced or specialized products may involve more careful purchasing decisions.
6. Strength or Weakness of the Marks: Evaluates the inherent distinctiveness or strength of the marks. Distinctive and unique marks are generally afforded stronger protection.
7. Evidence of Actual Confusion: Examines whether there is any documented evidence of confusion among consumers in the marketplace. Actual instances of confusion can be compelling evidence.
8. Length of Time During Which There Has Been Concurrent Use Without Evidence of Actual Confusion.
Sabel BV versus Puma AG (C-251/95, CJEU, November 1997 held that the Court stressed a global appreciation of confusion: visual, aural, and conceptual similarities must be weighed alongside the marks’ distinctiveness and the goods involved OBJ. It held that a shared concept can contribute to confusion but is not decisive by itself. In this case, Puma’s silhouette mark was a weak, “imperfect” image and not widely known. The mere fact that both logos depicted big cats did not suffice to confuse, because the earlier mark lacked high distinctiveness [OBJ]
Canon Kabushiki Kaisha v MGM Grand (C-39/97, CJEU, September 1998 held that the Court confirmed that a trademark’s role is to signal origin and that confusion is assessed globally. Crucially, it held that if goods/services are identical or similar, confusion may exist even when the public perceives that the products come from different sources, OBJ. The decisive factors are the marks’ resemblance and the earlier mark’s distinctiveness. A highly distinctive or well-known mark can stretch protection broadly. Even if goods seem to have different origins, confusion can arise if consumers mistakenly think they come from the same or linked undertakings. Conversely, if the public clearly would not link them to the same source, no confusion.
Contorno Textil, SL versus EUIPO (Case T-773/22, GC, October 2023 held that the GC found the marks globally similar. Both depict a highly recognizable “sausage dog” breed in profile. Importantly, “dachshund” is instantly understood by consumers, and the element “TECKEL” is the word for dachshund in another language, reinforcing the shared concept. The Court noted that the dog image in each mark is not a decorative background but a dominant, distinctive element. Thus, despite some differences in style, the conceptual overlap is strong. In short, visual similarity was modest, but conceptual similarity was high.
Lewis Hamilton/ HAMILTON (EUIPO BoA R 336/2022-1, October 2023 held that both signs share the dominant element “Hamilton”. The Board of Appeal found goods/services identical or highly similar (e.g. watches and retail thereof) and deemed the marks on average similar. Notably, the Board did not credit Lewis Hamilton’s fame as creating a distinguishing concept for average consumers. It held that the relevant public (average EU consumer) would focus on the shared surname. Despite high consumer attention, the Board found that “LEWIS HAMILTON” could be seen as a sub-brand or extended brand of “HAMILTON.”
Joined Cases C-449/18 P & C-474/18 P, CJEU, September 2020, held that Facts/Issue: Footballer Lionel Messi applied for an EU figurative mark “MESSI” (for clothing, sports gear, etc.). This was opposed by JM-EV on prior marks “MASSI” (for similar goods). The EUIPO Opposition Division and Board found “MESSI” and “MASSI” visually/aurally similar and likely confusing. The General Court annulled those decisions, citing Messi’s fame. The CJEU was asked whether the GC correctly allowed Messi’s mark by treating his celebrity as a differentiating factor. EUIPO versus Messi Cuccittini.
In the world of product branding and trademark law, “likelihood of confusion” plays several critical roles:
1. Trademark Clearance & Strategy
Before you launch a new product name, logo or packaging, you conduct a trademark clearance search precisely to assess whether your proposed mark is likely to be confused with existing ones. If a search flags a high risk, you’ll revise your branding to avoid legal challenges down the line and to ensure your product stands on its own.
2. Enforcement & Litigation
Once your product is on the market, if the owner of an earlier mark believes consumers are confusing the two, they can send a cease-and-desist letter or sue for infringement. In court, the likelihood-of-confusion test (using factors like similarity of marks, overlap of goods, channels of trade, evidence of actual confusion, etc.) determines whether you must rebrand or pay damages.
3. Consumer Protection
The doctrine exists ultimately to shield shoppers from being misled into buying one product thinking it’s another. By policing confusingly similar marks, the law promotes honest competition and helps maintain the integrity of brand reputations.
4. Brand Differentiation & Marketing
Awareness of confusion risks guides marketers in crafting distinctive names, logos, and packaging so that your product not only avoids legal trouble but also achieves stronger shelf presence and clearer messaging in the minds of your target audience.
The likelihood of confusion is a fundamental concept in Trademark protection, which assesses whether consumers are likely to be misled about the source of goods or services due to the similarity between two marks. The critical role of likelihood of confusion can be outlined in consumer protection, brand integrity, market fairness, legal framework, brand strategy, Global application and economic development.
The Likelihood of confusion is a fundamental aspect of trademark protection that serves to protect consumers, maintain fair competition, and safeguard the integrity of brands, helping to foster a developing economic environment.
