Key Considerations When Assessing Likelihood of Confusion Between Trademarks Containing Personal Names

I. Overview of Likelihood of Confusion

According to international practice (WIPO, EUIPO, USPTO) and Vietnamese law, two trademarks are considered confusingly similar when:
- They are visually, phonetically, or conceptually similar to the extent of causing confusion;
- They are registered for identical or similar goods/services;
- There is a likelihood that the average consumer will misinterpret the origin of the goods/services.

II. Specific Factors for Trademarks Containing Personal Names

1. Fame and Distinctiveness of the Name

- Famous or inherently distinctive names receive stronger protection due to their commercial association.
- Common names like “John Smith” or “Nguyen Van A” have lower distinctiveness unless they are tied to strong commercial recognition.
Example: The mark “Michael Jordan” is more strongly protected than “David Nguyen”.

2. Order and Structure of the Name

- Assessment should consider the full name (surname – middle – given name), not just one component.
- Given names often leave a stronger impression than surnames.
Example: “Anna Marie” and “Anna Bella” are more likely to be confused than “Nguyen Minh Quang” and “Pham Minh Quang”.

3. Additional Elements or Variations

- If the name includes descriptive terms, stylized elements, or symbols, it is essential to assess whether the name remains the dominant impression.
Example: “Dr. Smith Skincare” vs. “Smith Cosmetics”.

4. Context of Use and Commercial Custom

- In some industries (e.g., fashion, cosmetics, artisan food), using personal names as trademarks is common.
- In Vietnam, personal names are not automatically regarded as highly distinctive unless commercial use supports it.

III. Legal Criteria for Similarity Assessment

- Visual, phonetic, and conceptual comparisons.
  Example: “Le Anh Tuan” and “Le Anh Toan” are visually similar but phonetically different.
- Possibility of misleading association.
- Dominance of the personal name element within the overall trademark.

IV. Case Law and International Guidelines

- EUIPO: “Gabriel Garcia” refused for similarity to “Garcia Shoes” where “Garcia” was dominant.
- USPTO: Personal names may be refused if previously registered and commercially significant.
- Vietnam: Applicants may be required to prove authorization for using names of famous individuals.

V. Practical Advice for Filing and Counseling

- Consider adding clear distinguishing elements such as logos, descriptive words, or product categories.
- Gather evidence of actual use, commercial history, and brand recognition.
- For famous names, ensure proper authorization or legal rights to use the name.