Non-Traditional Marks and the Likelihood of Confusion

Abstract

The very label ‘non-traditional’ serves as a reminder that trade mark rules have developed around a traditional core of word and device marks. The likelihood of confusion test has in turn been influenced by this history. This chapter describes the manner in which a test developed around a template of traditional marks can be extended to disputes involving colours, shapes, and other less conventional marks. Such disputes inevitably raise novel issues. For instance, when may the defendant’s use of a colour on their products be construed as trade mark use, instead of merely incidental or decorative use? And how are courts to assess the similarity of colours, bearing in mind that consumers are deemed to have imperfect recollection? More pertinently, can such consumers distinguish between two shades of the same colour? Can two product shapes be sufficiently visually similar to satisfy the test, despite prominent and dissimilar word marks also being present on the products?