Aspects to be considered to establishing the similarity of two trademarks

The Andean Court of Justice (Proceeding 49-IP-2001, August 24, 2001) stated that, when two signs are analyzed to establish if they can involve a "risk of confusion", it is necessary to take the following aspects into account:

- the type of the marks to be compared (word, design, or word + design marks);

- the degree of the similarity (whether they are identical or there is a mere similarity);

- the class of products or services covered or to be covered thereby;

- whether they are common or well-known marks;

- the public for which the goods or services are intended.

The Court tribunal highlighted that the analysis must be much more strict when pharmaceutical products are involved, given that any confusion can cause irreparable damage to the consumers’ health.

The Court made these statements in developing a pre-judicial interpretation requested by the Council of State of Colombia in a nullity action instituted by Laboratorios Industriales Farmacéuticos Ecuatorianos –LIFE, owner of the mark SOROL, against the act of the Colombian Trademark Office that allowed the registration of trademark SOREL to an individual.

The owner of the mark SOREL defended its registration stating that the public would never take a skin depigmentation product for a product sold in a store specializing in agricultural inputs –SOROL.

However, the Council of State of Colombia applied the criteria set forth in the pre-judicial interpretation made by the Andean Court of Justice, and declared null the registration of the mark SOREL (File 6160. January 31, 2003).

In the opinion, the trademarks cause confusion when they are analyzed successively, given their phonetic, graphical and orthographical similarities.

The orthographical similarity arises because four out of five letters in the marks are identical and there are three consonants following the same order. The phonetic similarity is due to their sharing of root SOR.