Court orders invalidation of 'tree' mark for air fresheners
The Vilnius Regional Court has upheld Julius Sämann Ltd’s request for a declaration of invalidity of SiSCAR Spolka zoo Spolka Komandytowa’s international figurative trademark FOREST FRESH for goods in Class 5 of the Nice Classification, including air fresheners, on the grounds that it was confusingly similar to its earlier trademarks. The court also upheld Julius Sämann’s request that its figurative ‘tree’ trademarks be recognised as well known in Lithuania.
Defendant SiSCAR registered the international figurative trademark FOREST FRESH (International Registration No 945924) in Poland, with a priority date of July 27 2007, for deodorants (except those intended for personal use) and air fresheners:
On April 30 2012 the defendant requested the extension of its international registration to the Republic of Lithuania under Paragraph 2(3)ter of the Madrid Protocol.
Julius Sämann based its claims on the following national and Community trademarks (CTMs):
- Its figurative ‘tree’ CTM (CTM Registration 00091991), with a priority date of April 1 1996, registered for “air fresheners” in Class 5:
- Its figurative WUNDER-BAUM mark (Lithuanian Registration 14211), with a priority date of December 30 1993, registered for “air fresheners and deodorisers of premises” in Class 8:
The court held that the international registration for FOREST FRESH for Class 5 goods was invalid in Lithuania based on Article 7(1)(2) of the Law on Trademarks of the Republic of Lithuania. Pursuant to Article 7(1)(2), a trademark registration can be declared invalid if the following circumstances are established:
- the disputed trademark has a later priority date;
- the disputed trademark is identical or misleadingly similar to the earlier trademark;
- the goods and/or services are similar; and
- there is a likelihood that the relevant consumers will be misled.
The court supported its decision with the following arguments:
- Julius Sämann’s trademarks have an earlier priority date;
- The goods are essentially of the same kind, are intended for the same purpose, are produced from identical materials, and are mass consumption goods intended for the same consumers. The goods are sold in the same type of shops, and the scents and colours of the air fresheners are similar. According to the European Court of First Instance, when the goods covered by the earlier trademark include the goods indicated in the application of the disputed mark, such goods are considered identical (Castellblanch v OHIM (Case T-29/04), Paragraph 51).
- The more distinctive the earlier trademark, the greater the possibility of misleading consumers. Even the similarity of the marks based on a single criterion can be sufficient to cause confusion (see Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97)).
- The most general criterion for assessing similarity is the general impression created by the marks, which could cause confusion among consumers in the course of trade despite the existence of certain differences between them.
- When comparing the graphic and word elements of the marks at issue, the main element in all the trademarks was the graphic element - namely, the tree. The graphic element was the most distinctive and most known among consumers. Consumers would notice it before any other elements.
- The graphic elements of the parties’ trademarks contained identical branches depicted in the same way. The defendant stated that the trees were not identical, as their shape, growing conditions and origin were different - firs belong to the pinaceae family, while oaks belong to the fagaceae family. However, in the opinion of the court, the initial impression lasts only for a short period of time and consumers would most definitely not consider the family to which the trees belong. The court also dismissed the defendant’s argument that the shape of the tree in its trademark was different (oval): based on the general impression of the marks, both trees were of the same height and shape. As both trees were of the same size and had words written on them in the same place and in the same way, consumers might perceive the contested mark as a continuation of the earlier mark - that is, they might believe that the goods originate from the same source.
- Regarding the phonetic similarity, the court agreed with Julius Sämann that, in cases such as this one, the phonetic similarity was not important. The word element in both trademarks was secondary and did not determine the general perception of the marks.
- The average consumer rarely has the possibility to compare marks directly and usually relies on the first general impression. Given that consumers must rely on an imperfect recollection, and that the main element of the trademarks at issue was graphic, the court considered that consumers would undoubtedly associate the trademark FOREST FRESH with Julius Sämann’s earlier marks. This was confirmed by the results of public opinion surveys, which established that a substantial part of the respondents consider that the parties’ trademarks are similar.
In light of the above, the court decided to invalidate the FOREST FRESH trademark in Lithuania.
Julius Sämann had also requested that its trademarks be recognised as well known in Lithuania. The court considered advertisements for the trademarks in the European Union, and assessed public surveys which indicated that a high number of respondents knew the trademarks. The number was even higher among consumers of car air fresheners.
In addition, the court noted that:
- the trademarks have been in use for a long time;
- tree-shaped air fresheners dominated the Lithuanian market;
- a high number of companies distributed Julius Sämann’s air fresheners in Lithuania; and
- tree-shaped air fresheners have been shown in a number of films broadcasted in Lithuania.
The fact that Julius Sämann’s trademarks are registered in numerous countries for Class 5 goods only served to strengthen the link between the marks and a specific source. Similarly, the fact that the trademarks have been recognised as well known in other countries provided additional grounds to recognise the reputation of the trademarks in Lithuania.
Based on the foregoing, the court held that Julius Sämann’s trademarks have been well known in Lithuania since January 4 2007. In addition, the court prohibited Lithuanian distributors from selling Forest Fresh air fresheners in Lithuania, and ordered the destruction of all air fresheners bearing the FOREST FRESH mark.
Tomas Stanulionis, AAA Law, Vilnius
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