COFIX vs. HOTFIX: the question of similarity. What did the court in Belarus decide?
- Background
- What did the court decide?
- Why are the trademarks "SOFIX" and "HOTFIX" not confusingly similar?
- Conclusion
Background
In 2022, the coffee shop chain "COFIX" (hereinafter - the Applicant), which has a registered trademark of the same name valid in Belarus, applied to the Board of Appeal at the National Intellectual Property Center (hereinafter - the Board of Appeal) with an opposition against the registration of the designation "HOTFIX" as a trademark in Belarus.
In accordance with the legislation of Belarus, a subject, interested person, whose right was violated by the registration of another trademark, may challenge such registration by filing an opposition with the Board of Appeal, which may invalidate the granting of legal protection to the trademark.
The decision of the Board of Appeal adopted on the basis of the results of consideration of the opposition against granting legal protection to a trademark may be appealed to the Supreme Court of the Republic of Belarus within 6 months from the date of its receipt.
The applicant substantiated its claims as follows:
- the trademarks "COFIX" and "HOTFIX" are confusingly similar, which misleads consumers of identical goods and services;
- the goods and services for which the said trademarks have been granted legal protection in Belarus are homogeneous;
- the trademark "COFIX" has an earlier priority than the trademark "HOTFIX".
The Board of Appeal concluded that there were no grounds to satisfy the Applicants' opposition to the registration of the trademark "HOTFIX".
Considering the decision of the Board of Appeal unreasonable, the Applicant appealed to the Judicial Board for Intellectual Property of the Supreme Court of the Republic of Belarus with a demand to cancel the decision of the Board of Appeal and recognize the granting of legal protection to the trademark "HOTFIX" as invalid.
What did the court decide?
The Supreme Court concluded that the trademarks "HOTFIX" and "COFIX" are not confusingly similar, therefore, there are no grounds to invalidate the granting of legal protection to the trademark "HOTFIX", that is, it upheld the decisions of the Board of Appeal and upheld it.
Why are the trademarks "SOFIX" and "HOTFIX" not confusingly similar?
Firstly, the court considered that the sound (phonetic) perception of the two trademarks as a whole is different, which is explained by the different initial syllables - the closed syllable "hot" ("hot") and the open syllable "co" ("co").
In the court's opinion, these syllables, having a different number of letters and sounds, have a significant effect on the length and rhythm of sound. In turn, the coinciding final parts ("fix"), do not have a significant impact on the similarity of the designations, despite the presence of the same number of syllables, some coinciding sounds and their similar location.
Secondly, the court found that the compared trademarks are characterized by different visual (visual) perception by the consumer, as well as different types of fonts, their sizes, by which the trademarks are executed. The use of the Latin alphabet in both trademarks and the presence in them of the same formant ("fix") at the end of words does not create the same visual impression when perceiving the trademarks.
With regard to the semantic (semantic) meaning of the compared trademarks, the court pointed out that the trademark "HOTFIX" has a semantic meaning, so in translation from English into Russian it means: "fix package", "hot fix", "hot patch", "fix", "patch", "patch". On the other hand, the word "COFIX" is fancy and is not considered a lexical unit of any language.
Thirdly, the Supreme Court pointed out that the sociological survey submitted by the Applicant, according to which 42.5% of the respondents could or rather could confuse the designations (names of coffee shops) "COFIX" and "HOTFIX", which could affect their purchasing behavior, is not taken into account, as assessing the range of persons interviewed, one can conclude that the survey was not representative due to the insufficient number of persons interviewed (400 people living in different districts of Minsk). In this case, the number of respondents affects the representativeness of the survey, taking into account the granting of legal protection to the trademarks "HOTFIX" and "COFIX" throughout the territory of the Republic of Belarus.
Additionally, the Supreme Court pointed out that when conducting a social survey, leading questions were asked, including leading questions, the answers to which were predictable and expected.
Conclusion
As a general rule, a designation is considered confusingly similar to another if it is associated with it as a whole, even though they differ from each other. When considering the issue of presence or absence of similarity, first of all, designations are compared on the basis of three main criteria: visual, sound and semantic. The goods and services for which trademarks are registered are also compared for similarity.
It should be noted that the process of considering objections to the registration of a trademark in the Board of Appeal is adversarial, that is, the parties themselves provide evidence to support their position on the presence or absence of similarity of the compared designations, and a well-constructed and well-founded position can turn the tide of the case. In the above-mentioned case, the court's conclusion regarding the sociological survey submitted by the Applicant, which was recognized by the court as inadmissible evidence due to, inter alia, the lack of represence of the survey, as well as the absence of leading questions when conducting it, is quite interesting. Such a conclusion of the court once again proves the importance of proper preparation, execution and presentation of written evidence.
