After filing a Trademark registration, the most commonly encountered problem is that a similar trademark has already been registered. Applicants may at first sight think “my trademark is obviously different from others!”, or “the design is done by myself!” For those experienced, they might ask “The trademark is registered in different class from the prior mark, why did the authorities still consider any trademark is likely to result in confusion?” Let us answer your questions one by one with regard to the likelihood of confusion.
First of all, whether a mark would likely lead to confusion depends on the presence of frequently or commonly used characters. If it is found, the examiner will match such character with the database. Even if it is not frequently used, the examiner would still conduct investigations via the Internet and relevant means, and find out whether it constitutes a specific meaning and whether it is related to the specified class.
In addition, if your trademark consists of devices, the Intellectual Property Office will also inquire about the appearance of such shape. For example, if you adopt the shape of a circle as the device portion of your mark, the examiner may conduct a search on the shape, and the examination panel can refer to its designated class.
Then, applicants may wonder why the examiner considered their mark would likely induce confusion even they are registering at different classes of goods from the prior mark. Relationship between “class” (類別) and “sub-group” (小組群) has to be taken into consideration, meaning the “cross search” (交互檢索). Cross search refers to some products or services in the same class which are similar or identical to other classes in the sub-group. Therefore, during the assessment, the examiner will review this particular sub group and make the final judgment based on the above-mentioned conditions of likelihood of confusion.
To summarize, likelihood of confusion of trademarks can actually be avoided by advanced search. Furthermore, as such advanced search has been conducted, the time for review could be shortened and this avoid unnecessary delay in registering new trademarks. You may now have built up more knowledge about concept of likelihood of confusion on trademarks. However, you may also make an appointment with trademark attorneys for professional opinions. Being more experienced advising whether the mark would lead to confusion, what steps should the trademark owner be taken to ensure the greatest protection and chances of successful registration, and other related matters, you are advised to consult a professional trademark attorney before submitting the registration application of your mark.