1-0 to ZERO against Pirelli's P ZERO
The Irish Patents Office has upheld an opposition to the registration of the mark P ZERO filed by the holder of the prior Community trademark ZERO (June 22 2007).
The office had accepted the application by well-known Italian company Pirelli & C SpA to extend its international registration for the trademark P ZERO in respect of goods in Classes 14, 18 and 25 of the Nice Classification to Ireland.
Zero International Holding GmbH & Co Kommanditgesellschaft (Zero), the holder of the Community trademark ZERO in Classes 3, 14, 18 and 25, opposed Pirelli's application. Zero claimed that it had used its ZERO mark extensively in Germany and elsewhere. Pirelli counterclaimed that it is engaged, through licensing arrangements, in the sale and production of a wide range of goods and it commenced selling through its licensees in 2002. It argued that a search of Community and Irish trademark registers in Classes 3, 14, 18 and 25 disclose numerous marks that incorporate the word 'zero', which is a common term with regard to the goods for which Zero's mark is protected.
The acting controller upheld the opposition and refused the request for protection of the P ZERO mark in Ireland. He endorsed the SABEL Case (C-251/95) and noted that consumers tend to perceive marks as a whole and, as such, the slight distinction between the P ZERO and ZERO marks was bound to go unnoticed by the average consumer. The overall impression given by Zero's mark is the word 'zero' and the overall impression given by Pirelli's mark is of the same word with the letter 'P' before it. The letter 'P' does not qualify the word 'zero' in any meaningful way. Ultimately, the distinctive component that will remain in the average consumer's mind is the word 'zero', which is the dominant element visually and aurally. With this in mind, the acting controller found the two marks very closely similar.
Further, the acting controller reiterated that the likelihood of confusion must be assessed globally, having regard to all the relevant factors, including:
- the degree of similarity between the marks;
- the nature of the goods; and
- the circumstances of the trade in the goods.
The question must be looked at from the perspective of the average consumer of the goods in issue. The acting controller was of the view that the consumer would be likely to make the connection in his or her mind between P ZERO and the ZERO mark because P ZERO reproduced the ZERO mark in its entirety and the only additional element - the letter 'P' - does not serve to imbue it with a sufficiently different overall identity to that of the ZERO mark such that they might be perceived as separate and unrelated. Zero's mark is perfectly distinctive and memorable for the goods in respect of which it is protected. However, there is a real danger of direct confusion whereby the consumer perceives goods bearing the mark P ZERO to be from the same source as those he or she has previously experienced and identified by the mark ZERO.
Patricia McGovern, DFMG Solicitors, Dublin
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