Risk of confusion

Trademarks must not be confusingly similar to earlier marks or company names.

Trademark registration is not possible if the mark you are applying for causes a risk of confusion with an earlier trademark or company name.

A risk of confusion with an earlier trademark or company name may arise if

• the marks are identical or similar and
• the marks cover identical or similar goods or services.

• domestic trademarks and trademark applications
• EU trademarks and trademark applications
• international registrations (WIPO) and applications designating Finland; or
• domestic company names applied for entry or entered into the Finnish Trade Register.

Assessing the similarity of marks

When assessing the similarity of any two trademarks, it may often be necessary to consider which parts of the marks are relevant for the comparison, in other words, which parts are strong (distinctive) and which parts are weak (non-distinctive). The strong and distinctive parts are significant, because they constitute the primary object of protection in the mark.

Example: The mark “Rose" has been registered for clothing and footwear in class 25. It is liable to be confused with a later trademark application for “Jeans Rose" for trousers and jeans. The word “Rose" is a strong and therefore distinctive part of both marks. The word “Jeans" cannot be protected because it only describes the products, that is, certain kinds of trousers. This means the mark “Rose" constitutes an obstacle to the application for “Jeans Rose".

However, registering the new mark is possible with the consent of the owner of the earlier mark.

If the trademarks are identical to each other, it is often obvious that there is a risk of confusion. In such a case, we only need to compare the marks with regard to if they cover identical or similar goods and services.

Assessing the similarity of goods and services

We assess the similarity of goods and services based on the lists of goods and services that are entered in the register for each mark. For company names, we make the assessment based on the line of business recorded in the Finnish Trade Register. This means it makes no difference what goods or services the trademark is actually used for.

When assessing the similarity of goods and services, we take into account all circumstances that are relevant for the comparison, including the nature, intended purpose, and method of use of the goods or services, and whether they are in competition with each other or complementary.

If trademarks cover similar goods and services

There is a risk of confusion if the trademark you are applying for is similar to an earlier trademark or company name and if it also covers identical or similar goods.

Example: You are applying for the trademark “Lion" for jewellery in class 14. The Trademark Register already contains a “Lion" trademark registered for watches in class 14. The marks are completely identical and the goods are very similar. It is usual that a manufacturer in the jewellery and watch business makes both products. Consequently, an average consumer might well assume that both Lion watches and Lion jewellery come from the same company. This means there is a risk of confusion between the marks.

If trademarks cover different goods and services

There is usually no risk of confusion even between similar trademarks if they cover different goods or services.

Example: You are applying for the trademark “Sole" for ice cream in class 30. It is not liable to be confused with another owner's earlier registered trademark “Sole" that covers clothing in class 25. Although the marks are identical, there is no risk of confusion because the goods are completely different from each other. Average consumers are not likely to assume that the Sole ice cream comes from the same manufacturer as the clothing brand they are familiar with.

There is an exception to this main rule: trademarks with a reputation can be protected against new marks even if they are registered for different goods and services. This exception aims to protect widely known trademarks and their reputation against damage and exploitation. Read more about trademarks with a reputation.

If trademarks sound similar

When assessing the risk of confusion, we also consider the phonetic similarity of the marks.

Example: “Yucca" is liable to be confused with Yukka or Yucc@ already registered for similar goods. Although the marks have different spelling and they look different, their pronunciation is identical.

Consent or limitation of the list of goods can remove the obstacle

When applying for a trademark that is liable to be confused with an earlier trademark or company name, you can overcome the obstacle and get your mark registered if the owner of the earlier mark or company name gives their written consent to the registration.

You can also overcome the obstacle and get your mark registered if you limit the list of goods and services so that your application no longer covers goods or services that are similar to the earlier mark.

Read more about other means for removing obstacles.

Before you apply, check if there are any obstacles causing a risk of confusion

Before filing your trademark application, search free databases to find out if there are any obstacles to your mark causing a risk of confusion.

If there are obstacles, you still have time to alter your trademark or consider asking for consent. Please note that you cannot change the mark any more after filing your application with the Finnish Patent and Registration Office (PRH). Search databases.

You can also ask us to carry out a preliminary examination for a fee. You will get the examination results in less than a week. Read more about our preliminary examinations.

Established trademarks

An earlier established trademark can also constitute an obstacle to the mark you are applying for, if the earlier mark has already been established by the time you file your registration application. Our examinations of the risk of confusion only cover trademark rights that are recorded in the Trademark Register. In practice, this means that earlier established trademarks cannot be taken into account until after the registration when the owner of the earlier right files an opposition.

EPriority and transfer of information from the WIPO and EUIPO registers

The International Trademark Register maintained by the World Intellectual Property Organization (WIPO) in Geneva and the EU Trademark Register maintained by the European Union Intellectual Property Office (EUIPO) in Alicante may contain trademark registrations or applications which we have not yet been informed about, but which could still constitute an obstacle to your application because they have earlier priority dates. We cannot take these marks into account when we are examining your application for obstacles during the application process.