Lack of graphic similarity enough to retain registration

Introduction

Figurative Trademark 525199 was registered with a priority date of May 6 2013 for goods in Classes 3, 5 and 29 and services in Classes 35 and 44 (Figure 1).

Figurative Trademark 278820 was registered with an earlier priority date for the same services in Class 35 (Figure 2). The rights holder believed that his triangular trademark was confusingly similar to the stylised fish of the later trademark and filed an appeal with the Patent Office against its registration.

Patent Office decision

The Patent Office refused the appeal, holding that the marks were different because of their visual dissimilarity: one had a predominantly oval shape, while the other was triangular. In addition, despite the obvious phonetic similarity between the word elements, they were written in different languages. Further, 'Amega' is a coined word with no meaning, whereas 'Omega 3' has a concrete linguistic meaning. While making an overall evaluation, the Patent Office concluded that a comparison of the marks should be based on their graphic representation, and that their visual impression should be the most important factor.

First appeal

The appellant appealed the Patent Office's decision before the IP Court, which predictably refused the appeal on the ground that the determining factor during a comparison of trademarks is graphic similarity. Further, the marks' word elements were in different languages and one of the words had no meaning, which contributed to the IP Court's finding of dissimilarity.

Second appeal

The appellant appealed the IP Court's judgment before the IP Court Presidium (cassation instance).

On July 18 2016 the presidium concluded that there was no reason to reverse the first-instance court judgment. In particular, it observed that, during an examination of a mark's word and figurative elements, the main factor should be the visual domination of one of the elements (eg, because of its large size or location within the overall composition). The importance of a figurative element in a combined design will also depend on the extent to which it fulfils its main function: the individualisation of a particular manufacturer's goods.

A figurative element may play an important role in the individualisation of goods, together with a word element. The degree of importance of a figurative element in a combined trademark will depend on its:

• originality;
• size; and
• position in relation to the word element.

These factors should be assessed separately and together. In this case, the issue of similarity was decided by the presidium on the basis of characteristics such as phonetics, graphics and semantics, and their importance was determined on the basis of dominating elements. As a result, the appellant's claims were refused in their entirety.

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