Citigroup fails to prevent registration of CITY GROSS marks

The Swedish Court of Patent Appeals has decided that there was no likelihood of confusion between the word mark CITY GROSS and the device mark CITY GROSS on the one hand, and some CITI device marks on the other. Additionally, it found that there was no likelihood of confusion between the CITY GROSS marks and the mark CITIGROUP. 

City Gross is a Swedish grocery retail chain ('gross' is an old Swedish word that is linked to wholesale). It filed for the registration of two trademarks: the word mark CITY GROSS and the device mark CITY GROSS (depicted below) for, among other things, services in Class 36 of the Nice Classification (insurance and financial services).

Citigroup opposed the registration of the marks for the services in Class 36, claiming that there was a risk of confusion with Citigroup's earlier CITI marks, including CITI, CITIGROUP, CITICORP and CITIGOLD.

Further, Citigroup argued that:

• Citigroup owned a number of registered marks containing the element 'citi' and should thus have protection for its series of marks;

• CITI was well known by a substantial part of the relevant public in Sweden; and   

• the use of the marks CITY GROSS would take unfair advantage of, or be detrimental to, the distinctive character or repute of the marks CITI and CITIGROUP.

City Gross objected to the claim that there was a risk of confusion between the marks. It argued that:

• the element 'citi' was not well known by a substantial part of the relevant public in Sweden; and
• the fact that Citigroup owned a number of trademarks with the element 'citi' was not determinative to the decision in this case.

The Patent and Trademark Office found that the marks were not likely to be confused due to differences between them, and that the documentation provided by Citigroup did not prove that the CITI marks were well known and deserved a higher level of protection. The documentation included Wikipedia articles, webpages from Citigroup and a 2007 survey from Interbrand.

Citigroup appealed the decision.

The Court of Patent Appeals upheld the decision and found that it could not be shown that the CITI marks were well known by a substantial part of the relevant public in Sweden. Further, the fact that Citigroup owned several trademarks beginning with 'citi' should not be taken into account to determine the additional protection afforded to a well-known trademark.

The fact that the trademarks applied for included 'gross' meant that they were dissimilar phonetically and visually to the CITI marks. Additionally, the device mark CITI and the device mark CITY GROSS had different figurative elements. This meant that there was no likelihood of confusion between the CITY GROSS marks and the earlier device marks containing 'citi'.

Further, the court held that there were visual and phonetic similarities between the word and device mark CITY GROSS and the mark CITIGROUP. The elements 'city' and 'citi' were similar, while the elements 'gross' and 'group' constituted the main difference between the trademarks. On the other hand, no particular element dominated the general impression of each trademark. Based on these considerations, the court held that there was no likelihood of confusion between CITY GROSS and CITIGROUP.

This ruling differs from a recent decision (2011) of the Court of Patent Appeals in which the court held that there was a likelihood of confusion between the marks CITI and CITY SVERIGE. In that case, it was Citigroup that had applied for protection of CITI as a word mark, but the Patent and Trademark Office cited the mark CITY and CITY SVERIGE ('City Sweden') against the registration. Citigroup appealed but the court found that there were phonetic and visual similarities between CITI and CITY SVERIGE.

One may conclude that, in the present case, the court reached a different conclusion with regard to visual similarity because of the figurative elements of the device mark CITI. It is interesting that the court found that CITI and CITY SVERIGE were phonetically similar, but that CITI and CITYGROUP were not.

Tom Kronhöffer and Isabella Kulevska, von lode advokat ab, Stockholm