Phonetic similarity can cause a likelihood of confusion

Background

ABC Chemical Co., Ltd (“ABC”) complained to Vietnamese competent authorities for the trademark infringement acts of An Sinh Company (“An Sinh”) located in Ho Chi Minh City.

 

ABC registered and used the mark "TEAM" in many years for the goods of “washing powder and detergent" in class 03 according to the Nice Classification in Vietnam and also being recognized as widely used on the market. Recently, An Sinh put into the market washing powder products branded "TIMY". ABC claimed that, though "TIMY" was not identical to “TEAM” in structure, however, it was a confusing similarity in sound [ti:m]. Hence, the relevant public might be confused to the protected mark “TEAM” when receiving information via oral advertising or communication. So, ABC complained that the act of using “TIMY” for the goods of washing power constituted a trademark infringement under the Intellectual Property Law.

 

Having reviewed the case, the authorities initially agreed with the complaints of ABC. However, An Sinh, in his motion, provided the authorities with the evidences and arguments to prove the legitimate uses of its trademark. Accordingly, An Sinh previously produced and sold the products under the trademarks "TIM–AN SINH” and then "TIMY NEW”. Both of the marks were also obtained Trademark Registrations from the National Office of Intellectual Property (“NOIP”). An Sinh believed that these marks were conferred the exclusive rights by the NOIP proved that the act of using “TIMY” would not infringe on the rights of the earlier mark “TEAM”. Furthermore, the registered marks put into the market previously contained elements of “TIM” & “TIMY” so much so that they would be familiar with the consumer. Therefore, An Sinh put into the market the products "TIMY" were just a continuation of using the previous marks (TIMY-NEW) by removing a weak element of "NEW". Also, the sign "TIMY" was not identical to “TEAM” in structure as having 2 syllables. With all the evidences, An Sinh argued that "TIMY" was not confusingly similar to “TEAM” of ABC, thus, not infringed on trademark rights of ABC. For the above reasons, the authorities were perplexed by the arguments of An Sinh.

 

Expert opinions

Upon reviewing the case, the legal counsel of Pham & Associates made the point of views as follows:

 

After finding the products "TEAM" of ABC selling well on the market, An Sinh intended to produce and market the products bearing a mark that somewhat made the consumers associated that such mark was the same origin or affiliated with ABC’s brand. Of course, they could not use directly a mark identical or similar to the trademark "TEAM". An Sinh conducted a way to gradually approach to the “TEAM”.

 

Firstly, An Sinh used the sign "TIM”, a word was not identical in structure but the same pronunciation with the target “TEAM”. To be registered, they added another sign of “AN SINH” for more distinction. (Under the Regulations on trademark examination of the NOIP, phonetic similarity can cause a likelihood of confusion). Thus, the sign of "TIM-AN SINH”" has been registered.

 

Secondly, to get closer to the target mark, An Sinh continued to use and register another mark "TIMY - NEW" which contained elements "TIM" added a letter "Y". The mark “TIMY – NEW” implied that this was a new product of An Sinh and the mark was also well accepted for protection due to not confusingly similar to the cited mark “TEAM”.

Finally, when An Sinh launching the products bearing the altered mark "TIMY", the intention of the company became "face off". Visually, the consumer might not confuse between “TIMY” and "TEAM". Phonetically, however, “TIMY” was identical to “TEAM” in the first major syllable ([ti:m]), letter "Y" was just a weakened vowel. Hence, the relevant public could be confused to the protected mark “TEAM” when receiving information via oral advertising or communication.

 

The marks "TIM-AN SINH" or "TIMY - NEW" were used and registered previously as mentioned above, which did not mean that the sign of “TIMY” used independently could also obtain an exclusive rights by the law. The removal of element "NEW" made ​​"TIMY" became more closer to "TEAM" and thus caused a likelihood of confusion.

 

In light of the analysis, we concluded that “TIMY" was confusing similarity to “TEAM” and that constituted a trademark infringement.

 

If you are interested in this topic, please contact us via email hanoi@pham.com.vn

 

TVH , Pham & Associates