Can a Similar Trademark Be Registered Without Legal Issues?
Introduction
When starting a new business or brand, one of the most common questions entrepreneurs face is whether they can register a trademark that is similar to an existing one. At first glance, a slight variation in spelling, design, or logo may seem harmless, but trademark law looks much deeper. The core concern is whether the proposed mark could confuse consumers or appear deceptively similar to another brand already in use. Understanding how trademark authorities assess similarity, the risks involved, and the possible outcomes is crucial before investing in a name or logo that might not stand the test of legal scrutiny. Let’s explore this through a hypothetical case study.
Similar Trademark Case Study: “IRONSEW” vs. “IRON”
Imagine you want to launch a denim brand under the name “IRONSEW” and file your application in Class 25, which covers clothing, footwear and headgear.
During the trademark search, you discover that someone has already registered the word “IRON” in Class 25. The question arises:
- Can you still apply for “IRONSEW”?
- What are the risks involved?
- Will your mark likely get registered?
How the Trademark Registry Evaluates Similar Marks
The Trademark Registry does not look at marks in isolation. It compares your proposed mark with existing registered marks on several grounds:
- Phonetic Similarity – Do the marks sound alike when spoken?
- Visual Similarity – Do the marks look alike when written?
- Conceptual Similarity – Do they convey the same idea or impression?
- Class of Goods/Services – Are they used in the same market segment?
Since “IRON” and “IRONSEW” are both in Class 25 (clothing), the Registry will carefully assess the likelihood of confusion.
Risk Analysis in This Case
- Dominant Element: The word “IRON” forms a major part of “IRONSEW.” Consumers may focus on “IRON” and overlook the suffix “SEW,” leading to potential confusion.
- Likelihood of Objection: The Registry may object under Section 11(1) of the Trade Marks Act, 1999, which prohibits registration of marks that are deceptively similar to earlier marks.
- Opposition Risk: Even if the Registry allows the application, the existing owner of “IRON” could file an opposition within four months of publication in the Trademark Journal.
Possible Scenarios in Case of Similar Trademarks
- Examination Stage: The Registry may raise a similarity objection. You can respond by arguing that “IRONSEW” as a whole is distinctive, visually longer and conceptually linked to sewing, while “IRON” is a common English word.
- Advertisement & Opposition Stage: If your response succeeds, your mark will be published. At this stage, the owner of “IRON” can oppose, claiming consumer confusion. This may lead to a lengthy legal process.
- Litigation Risk: If the existing brand is strong and actively used in denim or clothing, they may also send legal notices or file infringement suits once you begin commercial use.
Factors That May Work in Your Favor
- If IRON is not being actively used or the registration is old and vulnerable to cancellation for non-use (five years or more), your chances improve.
- The combination “SEW” adds a differentiating element, which could help argue distinctiveness.
- If you develop strong brand recognition for “IRONSEW,” it may eventually coexist with “IRON.”
Practical Advice for Entrepreneurs
- Conduct a Comprehensive Search: Don’t stop at the basic word match. Check the market presence of the earlier brand.
- Assess Risk Appetite: If you are ready to face possible objections and opposition, you may proceed with filing.
- Consider a Unique Coined Name: Choosing a more distinctive mark (one that doesn’t incorporate “IRON”) may help you avoid disputes and achieve quicker registration.
- File with a Logo/Device Mark: Sometimes filing a composite logo with a distinctive design element improves registrability.
Conclusion
Registering a trademark that incorporates an existing registered mark is always risky, especially in the same class of goods. In the case of “IRONSEW” vs. “IRON”, while it is possible to file the application, the entrepreneur must be prepared for objections and potential opposition.
A safer long-term strategy is to select a stronger, more distinctive brand name that stands out in the marketplace. However, if you decide to go ahead with “IRONSEW,” ensure you have a well-prepared legal strategy to defend your mark.
For expert assistance in registering your similar Trademarks, it is advisable to consult an experienced trademark attorney or IP professional, we at My Trademark Guide can help you through the process and help you present a strong case for registration.
