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

Introduction
Key points to remember

Case law

Introduction

The question whether there is a likelihood of confusion between two trade marks may arise in several situations – for example, in the case of trade mark registrations or trade mark oppositions, or in the use of trade marks in the marketing and sale of goods and services.

It may seem commercially attractive for businesses to register a mark that contains descriptive elements, as the intended consumers will quickly understand the type of goods or services being sold under the mark. However, the more descriptive the mark, the narrower the scope of protection granted. It is only when the descriptive mark has acquired increased distinctiveness (through extensive exposure and use in the marketplace) that it can act as a real barrier to the use of similar signs by other businesses.

In order to demonstrate the Swedish patent and market courts’ assessment of trademarks with descriptive elements (for example, a word mark compared to another word mark, a design mark compared to another design mark or a word mark compared to a figurative mark), this article compiles relevant and relevant examples from Swedish case law on registration and infringement from recent years. A case recently decided by the Patent and Market Court (PMC) regarding the likelihood of confusion between a company name and a trademark is also included.

Key points to remember

The case law clearly shows that, as a general rule, the scope of protection afforded by Swedish patent and market courts to trademarks containing descriptive elements – such as KRISPROLLS for cookies and WART for wart removal products – is very narrow when it comes to assessing the likelihood of confusion. Thus, the proprietor of the KRISPROLLS mark had to accept that its competitor uses a similar mark (CRISP ROLLS) for identical products and the proprietor of the WARTNER mark could not prevent the registration of the WARTNIX mark for anti-warts products. It is only when a mark with descriptive elements has achieved increased distinctiveness that the trade mark proprietor succeeds in preventing others from using similar marks – see in this respect the cases concerning THE BODY marks SHOP and OATLY, as well as the recently decided case between Aktiebolaget Trav och Galopp and Svenska Spel Sport & Casino.

As the scope of protection varies depending on the characteristics of the mark, trademark owners are advised to be strategic in creating new marks. In summary, to obtain a trademark with a broad scope of protection, it is necessary to avoid descriptive elements, even if such elements will seem attractive to companies from the point of view of communication with consumers.

Case law

Earlier mark

Contradictory
mark or mark

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

Similarity between the marks and any other relevant factors

WARTNER

WARTNIX

The earlier mark covered “pharmaceutical preparations”. The mark at issue covered “medical preparations and substances”.

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

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

The PMCA concluded that there was no likelihood of confusion.

Legal mentionsZoom

LEGAL ROOM

Both marks covered “legal services“.

The PMCA argued that the services were identical.

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

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

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

The brands as a whole have given rise to different associations.

The PMCA concluded that there was no likelihood of confusion.

KRISPROLES

CRUNCHY ROLLS

Both marks covered “biscuits, rusks”.

The PMCA found the goods to be identical.

The PMCA found that KRISPROLLS had low original distinctiveness for cookies and therefore a limited scope of protection. The trade mark proprietor had failed to demonstrate distinctiveness enhanced by use.

KRISPROLLS and CRISP ROLLS are basically the same phonetically.

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

The PMCA concluded that there was no likelihood of confusion.

Both marks covered “security services”.

The Patent and Market Court (PMC) found the services to be identical.

The PMC argued that the words “SAFE4U” and “SAFE” feature prominently in the respective marks.

There is a visual similarity between the marks: both marks have a blue background and gold/yellow border and contain the word ‘SAFE’.

However, the marks contain various differences, such as the words “SECURITY OF SWEDEN” versus the word “BEVAKNING”. Further, the word “SAFE” is descriptive of the services to which the marks apply.

The PCM concluded that there was no likelihood of confusion.

OATLY

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

The PMCA found that there was a similarity between the subject goods.

The PMCA found that OATLY had normal inherent distinctiveness from registered products. However, the mark had been used to such an extent that it enjoyed an increased distinctive character compared to flours 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 trade marks – without being descriptive – they are both reminiscent of oat products.

The PMCA concluded that there was a likelihood of confusion.

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

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

The PMC found that the inherent distinctiveness of THE BODY SHOP mark in relation to the goods and services at issue was weak. However, THE BODY SHOP benefited from an enhanced distinctive character for cosmetics and hair and body care products falling within Class 3 as well as for the retail sale of these products falling within 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, individual elements should not be assessed alone; the notes must be compared in their entirety.

There is some visual and phonetic similarity between product brands. There is also some conceptual similarity between the marks since the words ‘FACE’ and ‘BODY’ are both associated with the human body.

The PCM concluded that there was a likelihood of confusion.

Aktiebolaget Trav och Galopp

The former corporate name covered, among other things, the service of “offering games for money, promoting the sport of trotting and galloping”. The trademark in dispute covered, inter alia, “(printed) lottery tickets, betting activities and the organization of lotteries, etc”.

The PMC considered that there was in principle a similarity between the goods and services offered by Aktiebolaget Trav och Galopp and the goods registered under the trade mark.

The PMC considered that the company name Trav och Galopp had little inherent distinctiveness. However, the company name had acquired a normal degree of distinctiveness through usage since 1973 and through intense market exposure.

The word elements of the mark are, in principle, identical to the relevant part of the company name. The verb elements are phonetically identical. The mark contains additional figurative elements. The flag works almost like a background; the other symbol has a strong distinctive character but forms a slightly smaller part of the mark and is positioned at some distance from the word elements. Although the symbol is prominent, the word elements are the dominant part of the mark.

The PCM concluded that there was a likelihood of confusion.

For more information on this subject, please contact Maria Bruder to Westerberg & Partners Advokatbyrå Ab by telephone (+46 8 5784 03 00) or by e-mail ([email protected]). The Westerberg & Partners Advokatbyrå Ab website can be accessed at www.westerberg.com.

About Bernice Dyer

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