Legal advice on Distinguishing Between Trademarks

Renowned trademarks constitute one of the most valuable assets for global corporations, reflecting trust, quality, and commercial identity. A prime example is Mercedes, the prestigious German automobile brand. Recently, an Indian company introduced a trademark named MERCEDIA, featuring design elements such as a blue flame, a cogwheel, and a three-bladed fan, visually distinct from the familiar Mercedes emblem.

This raises a critical question: Is visual distinction alone sufficient to prevent potential consumer confusion between the two marks?

Explanation: Trademark law does not focus solely on visual differences. It also considers pronunciation, phonetic impression, overall consumer perception, and the commercial class in which the mark is registered. The primary objective is to safeguard consumers and protect the commercial rights of well-known trademarks.

Daimler AG’s Objection

Daimler AG formally objected to the registration of MERCEDIA based on:

1. Similarity in letters and pronunciation.

2. Registration of both marks under Class 37 (automobile maintenance services).

3. Likelihood of consumer confusion and potential exploitation of the MERCEDES brand’s reputation.

Clarification: Trademark law empowers owners of famous marks to prevent imitation that may mislead consumers, especially within the same commercial domain.

Saudi Authority for Intellectual Property (SAIP) Defense

The SAIP ruled in favor of MERCEDIA, emphasizing that:

● The mark incorporates a cogwheel with a three-bladed fan and a blue flame, along with the word “MERCEDIA” in a distinctive font and color, creating a visually innovative and unique design distinct from MERCEDES.

● MERCEDES marks typically feature a three-dimensional star within a circle or other verbal elements.

● Evaluation of the mark as an integrated whole: the combination of visual elements produces a distinct overall impression.

● Result: the average consumer can clearly distinguish between the two marks without confusion.

Clarification: Legal assessment focuses on overall consumer perception, not merely visual elements. Visual innovation is significant, yet it is not the sole criterion.

Primary Court Decision

The primary court rejected the registration of MERCEDIA, citing phonetic and auditory similarity with MERCEDES.

Reasoning:

● Similar pronunciation may suggest that the two marks are related or originate from the same source.

● The term MERCEDIA is perceived as a truncation of MERCEDES, increasing the likelihood of confusion.

● Phonetic impact often outweighs visual differences, particularly for well-known marks.

Clarification: Even with distinct design, phonetic similarity alone may justify refusal to protect the original brand’s reputation.

Court of Appeal Confirmation

The Court of Appeal upheld the decision, referencing Clause (13) of Article 3 in the Gulf Trademark Law, which prohibits registration of any mark that imitates a famous mark—even if visually distinct—especially if it operates within the same commercial class or activity.

Clarification: Gulf trademark law balances visual creativity of a new mark with protection of the original mark’s commercial reputation, ensuring that fame is not exploited and consumers are not misled.

Conclusion:

The MERCEDES vs. MERCEDIA case exemplifies the delicate balance that trademark laws seek to achieve between protecting the commercial reputation of renowned marks and encouraging innovation and visual creativity in new marks. The case demonstrates that mere visual differentiation is insufficient to avoid potential confusion; the mark must be evaluated as an integrated unit considering pronunciation, phonetic impression, consumer perception, and the registered commercial class.

It underscores that phonetic similarity can carry more weight than visual differences, particularly for globally recognized marks, and that consumer protection and the preservation of the original mark’s reputation remain the primary objectives of trademark legislation. The case also highlights the critical role of competent authorities and courts in assessing consumer perception and the likelihood of confusion—a fundamental standard for ensuring fair competition and a transparent market.

From a practical standpoint, the case teaches that both visual and phonetic distinctiveness must be considered when registering a new trademark. A new mark should be sufficiently unique to avoid confusion with established marks, even if the design is innovative.

Ultimately, protecting innovation is not only about safeguarding the visual design but also about preserving the reputation and commercial identity of existing marks, ensuring clarity of brand identity for consumers—a core principle of modern commercial and intellectual property law, including in the Gulf and Saudi systems.

By /Intellectual Property Department .