In practice, when comparing trademarks, the phrase “likelihood of confusion” is often understood as “direct confusion”, which means that consumer mistakes one mark for another based on a visual recognition of similarities between elements such as components, structure, pronunciation, and the list of goods/services bearing the trademark. However, “likelihood of confusion” should fundamentally be understood to include both “direct confusion” and “indirect confusion”. Indirect confusion occurs when consumers can recognize differences between trademarks, but since these trademarks both contain a distinctive element or similar distinctive element and the proposed goods/services are the same or similar, consumers may mistakenly believe that these goods/services come from the same or economically linked undertakings. This connection may be enterprises belonging to the same group of companies, in the case of licensing, merchandising or distribution arrangements as well as in any other situation where the public assumes that the use of the mark is normally possible only with the agreement of the trade mark proprietor, and that quality assurance and control are provided by the trade mark proprietor.
Regulations regarding “likelihood of confusion” stem from the essential function of trademarks to distinguish and clearly identify the source of goods/services bearing the trademark, allowing consumers to differentiate between goods/services from different manufacturers/suppliers. Therefore, the IP Law needs to eliminate the risk or prevent actions that cause confusion about the origin of goods and services for consumers. This, in turn, ensures a fair competitive environment among businesses and minimizes risks in the process of selecting goods and services, especially as consumers often have a tendency and habit of choosing reputable trademarks or trademarks they are familiar with.
The concept of “indirect confusion” is addressed in the IP Law of several countries and regions, including the United States and Europe. In Case C-120/04, between Medion AG (“Medion”) and Thomson Multimedia Sales Germany & Austria GmbH (“Thomson”), in which Thomson uses the trademark “THOMSON LIFE” containing the trademark “LIFE” already registered by Medion, the question was whether there existed “likelihood of confusion” between the trademark “LIFE” and “THOMSON LIFE” according to the law at that time, particularly when the element “THOMSON” played a significant role in creating the commercial impression, as argued by the Oberlandesgericht court.
In this case, the court extended the interpretation of the provisions of Article 5(1)(b) to state that, in case the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.
It is understood that, as to the overall impression, the two trademarks might not be considered confusingly similar. However, when comparing two marks, particularly in cases where the goods/services bearing the trademarks are similar and/or identical, consumers are likely to be confused into thinking that the two trademarks come from the same or economically linked. Essentially, adding the name of a party, usually the applicant’s trade name, to an existing trademark to create a new trademark may be not sufficient to exclude the likelihood of confusion between the trademarks.
Vietnamese law does not explicitly define the concept of “indirect confusion”; however, it is indirectly reflected in the legal provisions and current examination practices. According to Article 4.16 of the Intellectual Property Law, “A trademark is any sign used to distinguish goods or services of different organizations and individuals.” Point (i)(c) of Article 26.8 of Circular 23/2023/TT-BKHCN further clarifies as follows:
“c) Signs shall be considered similar to the point of confusion with a control mark if:
(i) Such signs are similar to the control mark in terms of structure and/or pronunciation and/or meaning and/or presentation to the point of causing consumers to confuse that they are one or one subject matter is a variant of the other subject matter or the two subject matters are of the same origin;”
In examination practice, there have been several cases where later trademarks were refused due to causing confusion about the origin of the goods/services bearing the trademark. According to Decision No. 40275/QD-SHTT dated June 9, 2023, from the Intellectual Property Office (“IP Vietnam”) regarding the resolution of a complaint related to Trademark Application No. 4-2007-11772 of SCG Plastics Company Limited, the sign “
” (Class: 11, 12, 20, 21, 28) was refused for being confusingly similar to the prior Reg. No. 12326 for the trademark “
” (Class: 16, 25, 28). The IP Vietnam determined that although the sign and the prior trademark are distinguishable in term of visual, they both have the main and significant element “MARVEL”, and both apply to products in Class 28. Therefore, the use of similar trademarks for similar products by a third party could lead to consumer confusion regarding the origin of the goods/services.
In conclusion, it can be seen that according to the regulations and current examination practice, the term “likelihood of confusion” needs to be understood in both aspects of direct confusion and indirect confusion. The criterion of “similarity causing confusion” is also often assessed by comparing the main components that contribute to the brand’s distinctiveness. Therefore, Applicants should pay special attention to this issue to avoid any potential risk of refusal.
By Phung Thu Trang
Trademark Department
