Trademark similarity is a cornerstone of trademark clearance and protection, but what counts as similar varies dramatically across borders. While one jurisdiction’s main focus is on how a mark sounds, another might prioritize how it looks or what it means. Despite shared legal frameworks, national practices often diverge.
For trademark professionals navigating global launches and tight timelines, understanding these nuances isn’t optional; it’s essential.
To explore these differences, we conducted a global study, Navigating Verbal Trademark Similarity Across Borders, analyzing 15 years of trademark litigation data from the Clarivate Darts-ip platform. We focused on how intellectual property offices and courts around the world assess the three pillars of verbal similarity: phonetic, visual, and conceptual. The findings reveal not only regional patterns but also the cultural logic behind them.
One strong difference can tip the scale
Across jurisdictions, one trend stands out: a single point of dissimilarity often outweighs multiple similarities. If two trademarks are phonetically and visually close but conceptually distinct, they’re often deemed dissimilar overall.
This ‘neutralization’ approach is especially common in Europe. For instance, in Sweden, VARDA vs. VARVA were phonetically and visually close, but the conceptual gap – ‘to become’ vs. ‘laps or motion’ – led to a finding of non-similarity. In Norway, NORØ vs. NORO looked nearly identical, but the vowel shift from ‘O’ to ‘Ø’ carried enough phonetic weight to override visual similarity. In the U.K., QUIZ vs. QUIN showed how a strong conceptual identity – ‘QUIZ’ being instantly recognizable – can outweigh phonetic and visual overlap.
The takeaway? A clear point of difference, especially in meaning or perception, can be decisive. For trademark attorneys advising on new marks, building in at least one strong differentiator isn’t just smart; it’s strategic.
Sound matters, but not equally everywhere
Phonetic similarity is considered globally, but its weight varies. In some regions, sound is paramount; in others, it’s just one factor among many.
In Latin America, phonetics often dominates trademark similarity cases. In Peru, ETOXIB vs. ETTEROCIB were found confusingly similar despite visual differences, due to shared endings and stress patterns. South Korea shows a similar trend. In TEEN TEEN vs. TINTIN, both rendered as ‘틴틴’ in Korean, phonetic identity overruled visual differences. Likewise, L’EAU vs. RAW were found similar because Korean pronunciation blurred the visual distinction.
Japan, however, places greater weight on phonetic differences between marks. In SOFTWEAR vs. SOFTWAIR, the Japan Patent Office identified multiple possible pronunciations and ruled the marks phonetically dissimilar. This meticulous attention to pronunciation reflects Japan’s linguistic complexity and cultural sensitivity to spoken language.
Meaning can be a wild card
Conceptual similarity is often the most unpredictable factor. Although less common, conceptual similarity can sometimes outweigh phonetic and visual differences in trademark assessments across various jurisdictions.
In Japan, 遠山の金さん (Tōyama no Kin-san) and 名奉行金さん (Meibugyō Kin-san) were found similar solely because both referenced the same historical figure, despite differences in appearance and sound.
In Mexico, TARRO CHEVE and TARRITO were conceptually linked by the idea of a beer mug, leading to a similarity finding. And in France, CIELO vs. REY DE CIELO were deemed confusing due to their shared reference to ‘sky,’ even though the term isn’t French.
EUIPO vs. national offices: A strategic choice
Looking specifically at Europe, there is a divergence between how the EUIPO and national IP offices view trademark similarity. While the EUIPO often applies a lenient approach to similarity, especially on conceptual similarity, national offices like those in France, Spain, and Sweden may take a stricter stance.
This creates a strategic decision point for trademark attorneys. Filing with the EUIPO offers broader coverage and potentially more leniency on conceptual overlap. But the same mark, if challenged or enforced at the national level, may face a higher risk of rejection or infringement based on those conceptual elements.
For more examples of regional nuances, download our report: Navigating Verbal Trademark Similarity Across Borders
Crafting smarter trademark strategies
As brands expand across borders, trademark professionals face a fragmented legal landscape. Trademark similarity assessments are increasingly shaped by local language, culture, and legal precedent.
Understanding how different jurisdictions weigh phonetic, visual, and conceptual elements allows attorneys to tailor their trademark strategies with confidence. A single letter, sound, or meaning can shift the legal outcome. By embracing regional nuance and investing in data-driven planning, brands can build not just recognition—but resilience.
A new solution for assessing similarity risk
The rules may differ across regions, but the opportunity is the same. Understanding how jurisdictions interpret similarity gives trademark attorneys a strategic edge. With the right tools, data, and expertise, these differences become less of a hurdle—and more of a roadmap.
That’s where AI is changing the game. At Clarivate, we’ve developed solutions like RiskMark, which combines generative and predictive AI with global case law and trusted CompuMark data. It’s a smarter, faster way to assess trademark risk, anticipate local challenges, and make confident decisions early in the trademark process.
To learn more about RiskMark and our CompuMark trademark solutions, contact us today.
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