LEGAL PRINCIPLE: INTELLECTUAL PROPERTY LAW — Trade Marks — Determining Confusing Similarity Between Marks
PRINCIPLE STATEMENT
In deciding whether two marks are confusingly similar, the marks alone must be considered, divorced from associated features or get up and the like. Evidence is admissible to show which features are essential and which are inessential. The resemblance giving rise to infringement must lie in the basic idea of the mark.
RATIO DECIDENDI (SOURCE)
Per Musdapher, JSC, in Ferodo Limited & Anor v. Ibeto Industries Limited (2004) NLC-951999(SC) at p. 17; Paras A–C.
"In deciding whether two marks are confusingly similar, the marks alone must be considered, divorced from associated features or get up and the like. ... Evidence is admissible to show which of the features as shown in the register ... are essential and which are inessential so as to be unimportant in deciding questions of infringement. ... The resemblance giving rise to infringement must lie in the basic idea of the mark, in this case 'FERODO'."
EXPLANATION / SCOPE
Comparison of marks for infringement requires focusing solely on the marks themselves, detached from extraneous features like get-up or packaging. Evidence may be adduced to identify which features of the registered mark are essential and which are inessential. Infringement occurs only where the resemblance lies in the basic idea or essential feature of the mark, not in decorative or non-distinctive elements. This prevents extending protection beyond the core distinctive element of the registered mark.