3.3. The purpose of a trademark based on Afghan trademark law
3.4.2. Factors affecting similarity of trademarks
According to Jeremy Phillips, the factors that will be considered in assessing whether trademarks are similar or identical are subject to whether or not the later trademarks encompass words or other signs that are to be viewed as entirely “descriptive.” For example, if someone registers “LOUIS VUITTON”
for luggage, while another competitor uses “LOUIS VUITTON LUGGAGE”, the latter cannot claim that he has not used the same mark. In such a case, the term “LUGGAGE” is the name of the product, so
422 - Oxford Advance Learner’s Dictionary, Sixth edition, Oxford University Press, (2002), p. 642.
423 - Person who has registered or used a trademark for the first time.
424 - Jeremy Phillips, Trademark A Practical Anatomy, Oxford University Press (2003), p. 313. [hereinafter Jeremy Phillips, Trademark A Practical Anatomy].
425 - LTJ Diffusion SA v. Sadas Vertbaudet SA, judgment of the court in Case C-291/00/ 20 March 2003 (1) available at:
http://curia.europa.eu/juris/document/document.jsf?docid=48154&doclang=en
426 - Jeremy Phillips, Trademark A Practical Anatomy, p. 313.
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the marks are deemed identical.427 However, in the Afghan legal system, a competitor who does not use the same registered trademark, but does use part of a registered trademark, will not fall under the identical class of trademark usage. For example, the CBR office has registered two trademarks for the same class of product: an Iranian company registered the trademark “GULRANG” for a cleaning detergent product, while at the same time the CBR office registered “GULRANG STAR” and
“GULRANG AFGHAN” for an Afghan company producing cleaning detergent products for the same classes of products.428
In order to assess the degree of similarity between two marks, the court or registration authorities may determine, as a general principle, the degree of “visual”, “aural” and “conceptual” similarity between the two marks. Moreover, the signification and importance of those elements, category of products or services must also be considered during the assessment of similarity.429 In the following sections those criteria are briefly assessed.
3.4.2.1. Visual similarity
Visual similarity is one of the most important criteria for evaluating the similarity of two trademarks.
Visual similarity is composed of “text, colour, shape, size and position”. This similarity is given when one mark is visually represented in its entirety within another mark. This means that both marks are composed of the same words or letters, use the same fonts, or have the same shape, size and colour.430 In fact, there are no fixed criteria for measuring the similarity of two marks. It mostly depends on court knowledge and discretion. For example, the Kabul Primary Commercial Court (KPCC), in the case of P.E.L v. PEL concluded that, while both marks comprise the same word and letters, the use of “dots”
and the different meaning of the word that has been used as abbreviation make them dissimilar.431 Visual similarity is mostly applicable to “figurative and word marks” as well as goods and products that consumers buy based on visual perception.432 One practical case that occurred during the registration of a domestic mark for the same class in the CBR office was the case of Piroz v. Prince433 biscuit mark.
The Prince trademark was registered in KPCC in 1998 and renewed thereafter. In 2014, an Afghan biscuit production company wanted to register the same mark (in terms of colour, size, design and other
427 - Jeremy Phillips, Trademark A Practical Anatomy, p. 314.
428 - CBR office, Trademark Registration Book, Registration Number 6570 (1381/2002). Also Registration Number 7371 (1984).
429 - Karolina Jurkiewicz, The Concept of Likelihood of Confusion Under the Regulation on the Community trade mark.
M.P. Neginotti, LLM, p.26. [hereinafter Karolina Jurkiewicz, The Concept of Likelihood of Confusion].
430 - Jeremy Phillips, Trademark A Practical Anatomy, p. 321.
431- Kabul Primary Commercial Court. P.E.L v. PEL case number (263) date 1391/04/27 or 2012
432 - Karolina Jurkiewicz, The Concept of Likelihood of Confusion, p. 26.
433- Prince trademark was registered in Afghanistan under the registration number of 5749, 1998, for biscuit production.
Prince biscuit is a Belgian company registered there.
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specifications), but under a different name “Piroz biscuit.” The CBR office rejected the Piroz trademark because, in terms of colour, size, shape and design, it was visually identical to Prince biscuit that had already been registered in the same class of products in Afghanistan.434
3.4.2.2. Aural similarity
Aural similarity is relevant when the goods or products on which a mark is used are sold orally.435 With aural similarity, lawyers refer into the “linguistic discipline”. For instance, Harvard College tried to protect its “HARVARD” mark against the registration of “JARVARD” for use on clothes. “JARVARD”
was a Spanish mark which is pronounced by Spanish people as “HARVARD”. In this case, if we consider the Spanish pronunciation, “JARVARD” should not be registered as a trademark, as for Spanish speakers, pronunciation is similar to “HARVARD”. In addition, the “DAVINA” and
“BABINA” trademarks are pronounced differently in English and Spanish speaking countries. In Spanish, the letter “V” is pronounced as “B”, making the two marks almost aurally similar for Spanish speakers.436 The same difficulty can arise in Dari and Arabic languages. For instance, the Arabic
“NARGES” – which is a kind of flower – is pronounced “NARGAS” in Dari, carrying the same meaning but with a different pronunciation. The ATML is silent in this regard and makes no mention of this type of similarity. Moreover, the law does not answer the question of the legal authority of the Commercial Court in terms of how to behave when making decisions about the aural similarity of marks.
3.4.2.3. Conceptual similarity
If a trademark has a similar “semantic437 content”, “the same linguistic meaning” or embraces a “similar image”, it is conceptually similar. For example, the marks “ALADIN” and “Aladin” are conceptually similar because both terms embrace a character from a particular story. The only difference is that one is in capital letters while the other is not.438 Two marks can also be similar when they refer to the “same semantic term”.439 For instance, consumers will think that the goods and products covered by the
“Castillo” mark are the same as those of the “El Castillo” mark.440 From focusing on similarity, as a tool to determine the likelihood of confusion, we can conclude that if two marks look semantically similar or sound similar or identical, they will be treated as similar even if they are conceptually different.441
434-Ministry of Commerce and Industry. CBR office visited on December 27, 2015. Information was given by the CBR authority.
435 - Karolina Jurkiewicz, The Concept of Likelihood of Confusion, p. 27.
436 - Jeremy Phillips, Trademark a Practical Anatomy, p. 324.
437 - Semantic pertains to the study of the meaning and use of words and phrases in a language.
438 - Karolina Jurkiewicz, The Concept of Likelihood of Confusion, p. 29.
439 - The study of the meaning and use of words and phrases.
440 - Karolina Jurkiewicz, The Concept of Likelihood of Confusion, p. 29.
441 - Jeremy Phillips, Trademark a Practical Anatomy, p. 329.
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In this regard, the dissertation assesses a case in which Kabul Primary Commercial Court considered different linguistic meanings. As already mentioned, KPCC, in the case of “P.E.L Pashton Electronic Limited v. PEL Pakistan Electronic Company”, dismissed the claimant’s claim that the trademarks were similar. The claimant expressed that the defendant (PEL) trademark is similar to the plaintiff’s mark. The claimant registered the P.E.L mark in 2010 at the CBR Office in Afghanistan. In 2011 the claimant filed a claim against the PEL, stating that PEL was similar to his mark, and asked the KPCC to prohibit usage of PEL marks on electronic devices, specifically refrigerators, and to award compensation for losses. The KPCC ruled that the PEL trademark had already been registered in Pakistan in 1956 and in Afghanistan in 2001. The KPCC also concluded that the two marks were not identical. Even though the abbreviations are mostly the same, they contextually embrace different meanings. The claimant’s mark P.E.L, short for Pashton Electronic Limited, differs from the defendant mark PEL, short for Pakistan Electronic Company. Moreover, the Commercial Court explained that the claimant used dots (.) between each letter P, E and L, put them in parentheses and registered the trademark as follows: (P.E.L Limited). Consequently, the court rebutted the claimant’s demand that use of the PEL mark be prohibited in Afghanistan. Among other reasons that the KPCC stated, one was the dissimilarity between the P.E.L mark and PEL mark. The court also argued that PEL is a famous mark in Afghanistan and that, even if it were not registered in Afghanistan, it would still be protected based on Article 9 of the ATML. In its verdict, the court did not prohibit either company from using their trademarks in Afghanistan for the same class of goods.442