ANTI-FETT MAGNET held to be invalid
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The Board of Appeal of the Patent Office of the Republic of Lithuania has held that the trademark ANTI-FETT MAGNET was confusingly similar to the marks MAGNETS, CALC MAGNET, OXI ACTION MAGNETS and STAIN MAGNETS (Case 2Ap-1079, October 2 2008).
Reckitt Benckiser NV filed an application for invalidation of the word and figurative marks ANTI-FETT MAGNET for goods in Classes 3 and 5 of the Nice Classification (including washing and bleaching preparations for laundry use and disinfectants). The opposition was based on Reckitt’s figurative Community trademarks MAGNETS, CALC MAGNETS, OXI ACTION MAGNETS and STAIN MAGNETS for goods in Class 3 (detergents). Reckitt argued that:
- the mark ANTI-FETT MAGNET was confusingly similar to its own trademarks; and
- the goods covered by the ANTI-FETT MAGNET mark were similar to those covered by its own marks.
Based on the fact that the average consumer rarely has the opportunity to compare trademarks directly and usually remembers only the dominant element of the marks, the Board of Appeal focused its analysis onthe dominant element each mark.
First, the board indicated that the dominant element of Reckitt’s marks was the word ‘magnets’, since the other words (‘oxi action’, ‘stain’ and ‘calc’) were descriptive of Class 3 goods. In contrast, a ‘magnet’ is an object that is surrounded by a magnetic field and has the property, either natural or induced, of attracting iron, steel and other metals. The board held that the figurative elements of the marks were purely decorative and did not influence the overall impression of the marks.
The board also found that the word ‘magnet’ was the dominant element of the mark ANTI-FETT MAGNET, as the term ‘anti-fett’ was descriptive of goods in Classes 3 and 5. Moreover, the figurative element of the mark (the image of a magnet) only reinforced the word element ‘magnet’ and did not create a different impression.
In addition, the board found that the goods covered by the marks were similar based on their nature, purpose and channels of trade. First, the board held that the marks covered identical and similar goods in Class 3. Further, it found that “disinfectants” in Class 5 were similar to “detergents” in Class 3, since these goods are complementary and disinfectants may also be used for cleaning purposes.
The board thus concluded that the marks at issue were confusingly similar on the grounds that:
- the main elements of the marks were the words ‘magnets’ and ‘magnet’ (ie, the plural and singular form of the same word); and
- the goods covered by the marks were identical or similar.
In addition, the board held that the relevant public might be misled into believing that the trademark ANTI-FETT MAGNET belonged to a family of marks containing the word ‘magnet’ owned by Reckitt.
Consequently, the board held that the trademark ANTI-FETT MAGNET was invalid.
Evelina Serelyte, Law Firm AAA Baltic Service Company, Vilnius
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