CALGAZ and CALOR held to be confusingly similar

In L'Air Liquide SA v Calor Gas Limited, the acting controller has upheld an opposition against the extension to Ireland of the international registration for the mark CALGAZ.
L’Air Liquide SA was the holder of an international registration in respect of the trademark CALGAZ for goods in Classes 1 and 6 of the Nice Classification. It sought to extend the registration to Ireland, and the mark was accepted and advertised. Calor Gas Limited lodged a notice of opposition. The matter came to a hearing before the acting controller. 
Calor relied on a number of trademarks consisting of the word CALOR. At the hearing, Calor relied solely on the grounds of likelihood of confusion. The acting controller referred to the Irish High Court decision in Cofresco Frischalteprodukte GmbH and Co KG v Controller of Patents, Designs and Trademarks, in which the court endorsed previous pronouncements of the European Court of Justice (ECJ) as to the principles of interpretation to be applied in assessing the likelihood of confusion between trademarks. In summary, those principles are as follows:
  • The likelihood of confusion must be appreciated globally, having regard to all the relevant factors, including: 

    • the degree of similarity between the marks and between the goods;
    • the likelihood that the public will make an association between the earlier mark and the mark for which registration is sought; and
    • the distinctiveness of the earlier mark.
  • The similarity between the marks must be determined by reference to the degree of visual, aural and conceptual similarity between them. The importance to be attached to each of these elements must be assessed by reference to the category of goods and the circumstances in which they are marketed.
  • The assessment must be made from the perspective of the average consumer of the goods in question, who must be deemed to be reasonably observant and circumspect, but who rarely has the chance to make a direct comparison of the marks and must rely on an imperfect recollection of them.
  • The visual, aural and conceptual similarities between the marks must be assessed by reference to the overall impressions created by them, bearing in mind their distinctive and dominant components, because the average consumer normally perceives a mark as a whole and does not analyze its various details.
  • The higher the distinctiveness of the earlier mark (whether inherent or acquired through use), the greater the protection granted to it, and conversely.
The acting controller was of the view that the marks CALOR and CALGAZ are somewhat similar because of the shared character string 'C-A-L'. As the shared characters appear at the start of each word, they make more of an impression on the eye. The acting controller also stated that the marks sound somewhat alike because of the shared first syllable, which is more significant in terms of the overall aural impact of a word. The acting controller considered what he regarded to be the ordinary pronunciation of the mark CALOR - that is, CALOR has a short-sounding termination, as opposed to 'Cal-ore', as it was pronounced by the representative of L'Air Liquide at the hearing. Accordingly, the acting controller held that the marks were visually and aurally similar, but not highly similar. 
From a conceptual point of view, the acting controller held that neither mark expressed an intelligible concept that would be understood immediately and intuitively by the average consumer. The immediate conceptual impact of the trademark CALGAZ used in relation to gas products would be of the terms 'cal' (meaningless) and 'gaz' (signifying 'gas'), which would cause an average person who knows the mark CALOR to be reminded of it. The acting controller was also of the view that the goods in respect of which L'Air Liquide was seeking protection were identical to those for which Calor’s earlier trademark was registered. 
In addition, the acting controller held that the mark CALOR:
  • was inherently distinctive; and
  • had acquired a factual distinctiveness in the mind of the average consumer, such that it is firmly associated with Calor’s goods. 
Finally, the acting controller quoted the ECJ's decision in Sabel BV v Puma AG (Case C-251/95) to the effect that the more distinctive the earlier mark, the greater the likelihood of confusion. He took the view that the degree of recognition of the trademark CALOR among consumers was such that the average consumer of the goods at issue would be caused to recall the mark on encountering goods marketed under the trademark CALGAZ. The acting controller held that the average consumer, having recalled the CALOR trademark, would likely assume that CALGAZ-branded products were connected to Calor's gas products in the sense that they were put on the market by the same or a related undertaking. Therefore, there was a sufficient likelihood of confusion to warrant a refusal of the request for protection of the CALGAZ mark. 
Patricia McGovern, DFMG Solicitors, Dublin

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