Dissimilar products mean CRAYOLA marks are not confusing

The Administrative Court has held that the marks MINI MILK CRAYOLA and CRAYOLA are not confusingly similar as, among other things, the products to which they apply are different. In its analysis of what makes products similar, the court followed the criteria set out by the Andean Court (700-2004/TPI-INDECOPI, August 10 2004).

In the case at hand, Unilever NV had applied to register MINI MILK CRAYOLA as a mark in Class 30 of the Nice Classification (ice creams and related products). Binney & Smith, the maker of the famous Crayola brand of crayons, opposed the application on the basis of its CRAYOLA mark registered in Classes 16 (modelling clay and stationery, including crayons), 25 (clothing) and 28 (playthings and decorations). The Trademark Office rejected the opposition and Binney & Smith appealed to the Administrative Court.

The court held that in order to assess any risk of direct or indirect confusion, it is important to consider whether the products to which the marks apply are similar and, specifically, whether they are sufficiently related and/or competitively connected according to law and doctrine. The court found that in the case before it the products:

• are different in nature and serve different purposes as ice creams and related products are foodstuffs, while modelling clay and pencils relate to education and entertainment, clothing aims at keeping people warm and protected, and games are for amusement and entertainment;
  
  
• use different trade channels as the products in Class 30 are mostly sold in grocery shops, ice cream stores and restaurants, whereas the products in Classes 16, 25 and 28 are mainly sold in bookstores, bazaars, department stores and toy stores; although all products can be found in supermarkets, they are sold in different areas of these stores;
  
  
• are not interchangeable; and
  
  
• are not for joint use.

The court also dismissed Binney & Smith's argument that the products are aimed at the same type of consumers and, consequently, had the same entertainment purpose, as Unilever intended to use its MINI MILK CRAYOLA mark in relation to ice creams presented in a novel shape (crayon shape). The court did not consider the shape of the ice creams. It only examined the products' intended consumers and stated that ice creams and frozen confectionery are aimed at consumers of any age, whereas the elements for preparing these products, which the MINI MILK CRAYOLA mark also intended to distinguish, are for specialized consumers. In contrast, modelling clay and crayons are destined for students and artists, clothing is for the general public and games are for both children and adults. The court also stated that while there is evidence that some companies trading through the Internet or via catalogues specialize in a wide range of products for babies or children, including food, clothing and games, these products are aimed at a specific type of end user (children). Ice creams are not aimed exclusively at children and this is perhaps why companies focusing on the children's market have not expanded their activities to the commercialization of such products.

Accordingly, the court concluded that the products are not sufficiently related nor have a competitive connection to make a finding of confusion. The court also held that the marks do not bear any graphic or visual similarities as they are composed of different elements, and different sequences of vowels and consonants.

The criteria used by the court to assess the similarity between the products are implied by Article 136(a) of Andean Community Decision 486 on a Common Industrial Property Regime and are consistent with several decisions issued by the Andean Court. For example, in proceeding 5-IP-2002 (March 18 2003, Official Gazette 773), the Andean Court ruled that there is a competitive connection between products if they:

• have similar trade channels;
  
  
• use identical or similar advertising means;
  
  
• have a certain relationship or connection;
  
  
• are interchangeable; or
  
  
• have the same purpose.

It is tacitly recognized that the issue of whether products are related or share a competitive connection has to be judged according to the products to which the mark applies and in relation to the type of protection sought. However, the manner in which the products are presented or sold are factual circumstances that should be disregarded.

José Barreda, Barreda Moller, Lima