Recent Swedish case law on likelihood of confusion assessments for descriptive trademarks – Commentary

earlier trademark

conflicting
trademark or mark

Goods or services covered by the earlier trademark and the conflicting trademark

Similarity between the trademarks and any other relevant factors

WARNER

WARTNIX

The earlier trademark covered “pharmaceutical preparations”. The conflicting trademark covered “medical preparations and substances”.

The Patent and Market Court of Appeal (PMCA) held that some of the products were identical.

The prefix “WART” in both marks is descriptive for the treatment of warts.

The PMCA held that there was no likelihood of confusion.

LegalZoom

LEGALROOM

Both trademarks covered “legal services”.

The PMCA held that the services were identical.

The PMCA held that the terms “Legal” and “LEGAL” are commonly used to describe legal services and could therefore not be considered as an indication of origin for legal services.

Although the terms “LEGAL” and “Legal” are descriptive, they could not be neglected in the overall assessment.

The elements “Room” and “Zoom” constitute the distinctive and dominant components of the marks. There is a clear conceptual and phonetic difference between them.

The brands as a whole gave rise to different associations.

The PMCA held that there was no likelihood of confusion.

KRISPROLLS

CRISP ROLLS

Both trademarks covered “biscuits, rusks”.

The PMCA held that the goods were identical.

The PMCA held that KRISPROLLS had weak original distinctiveness for biscuits and thus a limited scope of protection. The trademark owner had failed to demonstrate enhanced distinctiveness by use.

KRISPROLLS and CRISP ROLLS are basically phonetically identical.

A visual difference is created by the difference in the initial letter (“K” versus “C”) and the space in between “CRISP” and “ROLLS”.

The PMCA held that there was no likelihood of confusion.

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Both marks covered “security services”.

The Patent and Market Court (PMC) held that the services were identical.

The PMC held that the words “SAFE4U” and “SAFE” take up a prominent position in the respective marks.

There is a visual similarity between the marks: both marks feature a blue background and a gold/yellow border and contain the word “SAFE”.

However, the marks contain various differences, such as the words “SECURITY OF SWEDEN” compared with the word “BEVAKNING”. Also, the word “SAFE” is descriptive in relation to the services to which the marks apply.

The PMC held that there was no likelihood of confusion.

OATLY

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The earlier mark covered “flour and nutritional preparations made from cereals”. The conflicting trademark covered “cereal cakes, including oatcakes for human consumption”.

The PMCA held that there was a similarity between the goods covered.

The PMCA held that OATLY enjoyed the normal inherent distinctiveness in relation to the registered goods. However, the trademark had been used to such an extent that it enjoyed an enhanced distinctiveness in relation to flour and cereals in class 30.

The words “Oatly” and “Oatie” begin with “OAT” but are separated by the endings “-ly” “-ie”. Both marks consist of five letters. There is some visual and phonetic similarity between them.

There is a conceptual similarity between the trademarks – without being descriptive – they both recall oat products.

The PMCA held that there was a likelihood of confusion.

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The earlier trademark covered “cosmetic products, retail services for cosmetics”. The conflicting trademark covered “cosmetic products, retail services for cosmetic products”.

The PMC held that the trademarks covered identical, or at least very similar, goods and services.

The PMC held that the inherent distinctiveness of THE BODY SHOP trademark in relation to the goods and services in question was low. However, THE BODY SHOP enjoyed an enhanced distinctiveness in relation to cosmetics and hair and body care products in class 3 as well as for the retail sale of such products in class 35. Therefore, it had obtained a normal degree of distinctiveness.

The common elements consist of the words “THE” and “SHOP” while the elements “FACE” and “BODY” differ. However, the individual elements should not be assessed on their own; the marks should be compared in their entirety.

There is some visual and phonetic similarity between the brands of goods. There is also some conceptual similarity between the marks as the words “FACE” and “BODY” are both associated with the human body.

The PMC held that there was a likelihood of confusion.

Aktiebolaget Trav och Galopp

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The earlier company name covered, among other things, the service “to provide games for money, to promote the sport of trotting and galloping”. The conflicting mark covered, among other things, “lottery tickets (printed), betting activities and the organization of lotteries, etc”.

The PMC held that, in principle, there was similarity between the goods and services offered by Aktiebolaget Trav och Galopp and the goods registered under the trademark.

The PMC held that the company name Trav och Galopp enjoyed low inherent distinctiveness. However, the company name had obtained a normal degree of distinctiveness through use since 1973 and through intense market exposure.

The word elements of the trademark are, in principle, identical to the relevant part of the company name. The word elements are phonetically identical. The trademark contains additional figurative elements. The flag functions almost as a background; the other symbol has strong distinctiveness but forms a slightly smaller part of the trademark and is positioned at some distance from the word elements. Although the symbol is prominent, the word elements form the dominant part of the trademark.

The PMC held that there was a likelihood of confusion.