Clothing and watches are not similar, says court

The Oslo Court of Appeal has issued its decision in the legal battle opposing Uranus AS, an importer of watches, and Isna, a Spanish clothing company, over the trademark MANGO (Case 06-059791ASI-BORG/03, October 4 2007).

Uranus, through its wholly-owned subsidiary Frithjof E Rasmussen AS, was once the largest importer of watches in Norway; it is still one of the leading importers. In 1997 Uranus applied for the registration of the trademark MANGO for goods in Class 14 of the Nice Classification (leather watch straps, imitation leather, plastic and synthetic material, clocks, watches and chronometrical instruments) in Norway. Isna owned the registered trademark MANGO for goods in Class 25 (clothing, footwear and headgear), among others. In 1999 Isna opposed the application on the grounds that there was a likelihood of confusion between the marks under Section 14(6) of the Trademark Act.

In 2001, the first division of the Patent Office found that there was no likelihood of confusion and upheld the registration. Isna appealed the decision. On December 20 2004, the second division of the office rejected Uranus's application. Uranus appealed to the Oslo District Court.

Both parties agreed that the issue of whether there was a likelihood of confusion between the marks should be assessed from the date on which Uranus submitted its trademark application (ie, 1997). For there to be a likelihood of confusion, both the marks and the goods must be similar under Section 6 of the act. Since the trademarks were identical, the issue was thus whether the types of goods covered by the marks - clothing and watches - were considered to be similar in 1997. The district court rejected Uranus's argument that the decision of the second division of the office was invalid and refused to register the mark under Section 14(6) of the act.

Uranus appealed the decision to the Oslo Court of Appeal. On October 4 2007 the court held that the trademark MANGO for clothing was not "liable to be confused" with the trademark MANGO for watches.

Uranus argued that clothing and watches are not substitutable or complementary, as they are used for different purposes and in different ways. Furthermore, the products were not produced in the same manner and were made of different materials. According to Uranus, the fact that clothing and watches had different distribution channels further indicated that there was no similarity between the products. Therefore, clothing and watches could not be regarded as similar pursuant to Section 6 of the act.

This view was endorsed by the court. The court found that the trademarks did not "relate to identical or similar goods" under Section 6. It held that in 1997 clothing and watches had different methods of use. Therefore, there was no likelihood of confusion.

The court emphasized that the trademark MANGO was distinctive for clothes. However, at the time of application, there was no reason to extend trademark protection to watches. In 1997 brand extension in Norway was not such that the average consumers would have been led to believe that the trademarks MANGO for clothing and MANGO for watches originated from the same undertaking.

The court thus declared that the decision of the second division of the office was invalid and allowed the registration of the trademark MANGO for watches in Norway.

The decision was unanimous and the claimant was awarded legal costs.

Felix Reimers, Advokatfirmaet Grette DA, Oslo