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ID ENTIC AL OR N EARLY RESEM BLE
DETERMINING IDENTICAL AND
SIMILAR (NEARLY RESEMBLE)
s.24(2) TMA2019
IDENTIC AL OR NEARLY RESEMBLE
• v) If, considering all those circumstances, you come to the conclusion
that there will be a confusion -that is to say, not necessarily that one
man will be injured and the other will gain illicit benefit, but that there
will be a confusion in the mind of the public which will lead to
confusion in the goods-then you may refuse the registration, or rather
you must refuse the registration in that case.
• Justice Parker –Pianotist Application (1905)
• “Pianola” v “Neola”
• i) You must judge of them, both by their look and by their sound.
• ii)You must consider the goods to which they are to be applied.
• iii)You must consider the nature and kind of customer who would be likely
to buy those goods.
• iv)In fact, you must consider all the surrounding circumstances; and you
must further consider what is likely to happen if each of those trade marks
is used in a normal way as a trade mark for the goods of the respective
owners of the marks.
T H E A P P ROACH TO TA K E I N
D E C I D I NG C O N F L I C T S
BETWEEN MARKS
• Luxmoore L]. in Aristoc v. Rysta (1943) 60 RPC 87 in a dissenting
judgement which was fully supported on appeal in the House of Lords
(I945) 62 RPC 65
• "The answer to the question whether the sound of one word resembles
too nearly the sound of another so as to bring the former within the
limit of section l2 of the Trade Marks Act 1938 must nearly always
depend on first impression, for obviously a person who is familiar with
both words would neither be deceived nor confused. It is the person
who knows the one word and has perhaps an imperfect recollection of it
who is likely to be deceived or confused. Little assistance, therefore, is to
be obtained from a meticulous comparison of the two words, letter by
letter, and syllable by syllable, pronounced with the clarity to be expected
from a teacher of elocution. The Court must be careful to make
allowance for imperfect recollection and the effect of careless
pronunciation and speech on the part not only of the person seeking to
buy under the trade description but also of the shop assistant ministering
to that person's want."

T H E A P P ROAC H TO TA K E I N D E C I D I N G
C O N F L I C T S B E T WE E N M A R K S
• Luxmoore L.J. in Aristoc v. Rysta (1943) 60 RPC 87 in a dissenting judgement
which was fully supported on appeal in the House of Lords (1945) 62 RPC 65.
• .. The doctrine of imperfect recollection has been applied to device marks in a
number of decisions made, or approved by, the Court. In applying the dictum
of * Luxmoore, L.J. it is important to strike the right balance. It is the ordinary
person with an ordinary memory, who might be a customers for the goods
concerned, who has to be considered. One is not concerned with those who
have it photographic recall, nor, as one judge put it, with "a moron in a hurry".
T H E A P P ROAC H TO TA K E I N D E C I D I N G
C O N F L I C T S B E T WE E N M A R K S
• "goods/services of the same description” or similar goods –
Jellinek's Application (1946) 63 RPC 59 ,
• The three criterias to consider
• I. the nature of the goods
• 2. their uses
• 3. the trade channels through which they pass on their way to the
consumers
Note: no one of these considerations is conclusive‘ in itself.
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T H E A P P ROAC H TO TA K E I N D E C I D I N G
C O N F L I C T S B E T WE E N M A R K S
• "goods/services of the same description" or similar goods
• Jellinek's Application (1946) 63 RPC 59
• Application for "PANDA" together with a device of a panda in class
3 for shoe polish. Opposition by the proprietor of a similar 'Panda"
mark registered in respect of shoes. They alleged that shoe polish
was within the same description of goods as boots and shoes, and
that a“ number of shoe manufacturers marketed shoes and shoe
polish under the same mark. Therefore possibility of confusion if the
same mark was registered by the applicant. '
• Held that shoes and shoe polish were not goods of the same
description and the registration would not offend section 12
PROTECTION OF WELL-KNOWN TRADE-
MARKS UNDER TMA2019
s.4 – Definition s.24(3)- scope of Regulation 5- Criteria of
protection a well-known Trademark
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S.34 – GROUNDS S.35 – OPPOSITION INFRINGEMENT OF REGISTERED

OF OPPOSITION PROCEEDINGS TRADEMARKS

OPPOSITION OF A REGISTERED TM

RELATED SECTIONS ON RIGHTS AND

ACTS AMOUNTING TO INFRINGEMENT
INFRINGEMENT

s.52 -
s.48 – Rights s.53 –
Registration
conferred by Registration
prima facie
registered TM conclusive
evidence
S.54 - S.55 – NON-
INFRINGEMENT INFRINGEMENT
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New provisions under Part VX on offences

LIMITATION OF RIGHTS which give rise to a criminal sanction/action
by TM owner

Previously there were no criminal

OFFENCE –
aspects/offences under TMA 1976, TM
CRIMINAL ASPECT
S.49 – Identical or OF TMA2019
owners must resort to the Trade
Descriptions Act to pursue a legal action.
similar TM registered S.50 – TM that have
by more than 1 become generic
person Now the criminal action and procedures is
within the provisions of the TMA 2019 itself.