4.1 Marks compared as a whole

The marks should be compared in their entirety. The overall or net impression of the two marks should be considered.

This principle was clearly stated in Clarke v Sharp (1898)15 RPC 141 at 146:

The European Court of Justice has recently commented in Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 at 224, that the visual, aural or conceptual similarity of the marks must be assessed by reference to:

the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components…the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role…the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

Where the marks contain one or two similar elements, but also contain other distinctive elements, this may not be considered enough to create deception or confusion. On the other hand, marks that differ from each other in only some respects may still be considered confusingly similar overall.

Each case must be considered on its merits, taking into account the following comments:

• Adding a prefix, suffix or other material (such as a house mark) to another person’s mark will usually constitute an infringement.¹⁴
• Disclaimed elements may still cause confusion and should be considered.¹⁵
• Other matter that is not distinctive (such as borders) should not be considered.

Footnotes

¹⁴ Section 162 of the Act states that the ‘registration of the owner of a trade mark shall be prima facie evidence of the validity of the original registration’.

¹⁵ Granada Trade Mark [1979] RPC 303 at 308.