Comparing Dominant Trademark Elements: CIRCLE SURROUND AUTOMOTIVE versus CIRCLE

2008 Hu 1470 Trademark refusal

[General principles of similarity assessment]

Composite marks are ordinarily assessed through the appearance, pronunciation and concept of the whole. A distinctive dominant element may be considered separately where the components do not form an inseparable combination.

[Applied-for mark]

Designated Goods: AM/FM Radio Receiver, MP3 Player, etc.

[Comparison mark]

Designated Goods: Portable Telecommunications Equipment

[Summary of the court decision]

1. Similarity of the composite marks 

“SURROUND” suggests surround sound or a surround system, while “AUTOMOTIVE” describes the intended automotive use of the radio receivers. Both elements are weakly distinctive. “CIRCLE” does not directly describe the goods and can function as the dominant element. Its pronunciation and concept are similar to those of the comparison mark “Circle”, creating a likelihood of confusion on identical or similar goods. 

2. Designated Goods. 

Although their physical forms differ, portable communications equipment increasingly incorporates multimedia functions such as AM/FM radio and MP3 playback. The goods may be produced by the same manufacturers and sold through the same outlets.

The applied-for mark covers goods including AM/FM radio receivers and MP3 players; the earlier mark covers portable communications equipment. Their production and sales channels and consumer groups overlap. Use of identical or similar marks could therefore suggest a common manufacturer or seller, supporting similarity of the goods. 

3. Conclusion

The marks have similar dominant elements and designate similar goods. The court found them similar.