enhanced distinctiveness
enhanced distinctiveness

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

Introduction
Key takeaways

case law

Introduction

The question of whether there exists a likelihood of confusion between two trademarks may arise in several situations – for example, in the case of trademark registrations or oppositions to trademarks, or in the use of trademarks when marketing and selling goods and services.

It may seem commercially attractive to companies to register a trademark that contains descriptive elements, as the targeted consumers will quickly grasp the kind of goods or services sold under the trademark. However, the more descriptive the trademark, the narrower the scope of protection afforded. Only when the descriptive mark has acquired enhanced distinctiveness (through extensive market exposure and use) may it constitute a real obstacle to other companies’ use of similar signs.

To demonstrate the Swedish patent and market courts’ assessment of trademarks with descriptive elements (eg, a word trademark compared with another word trademark, a figurative trademark compared with another figurative trademark or a word trademark compared with a figurative trademark), this article compiles illustrative and relevant examples from Swedish registration and infringement case law from recent years. A recently decided case from the Patent and Market Court (PMC) concerning the likelihood of confusion between a company name and a trademark is also included.

Key takeaways

The case law clearly shows that, as a main rule, the scope of protection awarded by the Swedish patent and market courts to trademarks containing descriptive elements – such as KRISPROLLS for biscuits and WART for wart removal products – is very narrow when it comes to assessing the likelihood of confusion. Thus, the owner of the trademark KRISPROLLS had to accept that its competitors used a similar mark (CRISP ROLLS) for identical goods and the proprietor of the WARTNER trademark could not prevent the registration of the WARTNIX trademark for wart

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