Evaluating the target market to determine third-party infringement

Evaluating the target market to determine third-party infringement
07 Feb 2020

Recognising and evaluating the target market that a product or service is aimed at can be a material factor at play in determining whether a trade mark constitutes a third-party infringement or not.

The High Court of Zimbabwe recently handed down a comprehensive judgment in a matter concerning trade marks filed in Zimbabwe that comprise of English transliterations of the corresponding Chinese brand names as applied to tobacco products, including cigarettes. The marks in dispute were essentially as follows:

JINLONG 津龍 and JINHUANG 津皇

One of the critical issues at play in determining whether or not an infringement had transpired was by identifying who the target market of the products was.

Given that it was established that Chinese speaking consumers of tobacco products were the primary target market for both parties’ products, the weight applied to the conceptual differences in meaning as between the trade marks in dispute was more pronounced.

To a purely English-speaking consumer, who may regard the above marks as invented words with no meaning, an argument could be made that there are visual similarities as between the above marks given the above common prefix “JIN” and the “NG” at the concluding end of the mark. However, a Chinese speaking consumer would interpret the above marks as meaning

JINLONG 津龍 “Zimbabwean Dragon” or JINHUANG 津皇 “Zimbabwean King”

which have notably different meanings and connotations. Whilst the visual and phonetic differences are significant, they are almost outweighed by the more prominent conceptual divide, better understood by the respective target market.

The Honourable Justice Manzunzu stated in his judgement of 9 January 2020:

The prefix “JIN” causes no confusion when it is used in combination with another mark like “HUANG” or “LONG”. Such suffixes make the marks sufficient to distinguish them from each other and sufficiently distinctive so as to negate the likelihood of deception and confusion among the members of the public and in particular the Chinese community.

KISCH IP assisted with this case in Zimbabwe where a favourable outcome was achieved for its client. At the date of writing this article, no appeal had been filed by the unsuccessful party.

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(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)
Karen Kitchen
Karen Kitchen

Karen Kitchen is a Director and Trade Mark Attorney at KISCH IP. Karen specialises in trade mark litigation, including infringement and unlawful competition matters, opposition and cancellation proceedings, extending throughout Africa. She has been in practice for more 10 years and has advised clients in a variety of industries including telecommunications, retail, food and beverage, banking and finance, as well as the pharmaceutical industry, on how to protect and enforce their various intellectual property rights and ensure the related commercial and regulatory aspects are sound.

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