Federal Administrative Court gives guidance on pronunciation of trademarks

The Swiss Federal Administrative Court has dismissed an appeal against a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had rejected an opposition by Merck KGaA based on its trademark CIZELLO for goods in Class 5 of the Nice Classification against the registration of the trademark SCIELO by Janssen R&D Ireland in the same class, on the ground that the relevant consumers would be highly attentive and perceive the differences between the marks (Case B-953/2013, October 15 2013).

Merck is the owner of the international trademark CIZELLO (No 993931) for various pharmaceutical goods in Class 5. On October 21 2011 Janssen filed the Swiss trademark SCIELO (No 624425), also for various pharmaceutical goods in Class 5. Merck opposed the application on the ground that the trademark was confusingly similar to its earlier trademark for identical goods.

On January 23 2013 the IGE dismissed the opposition. Although the goods were identical - and, therefore, a strict test was applied to determine whether the marks were similar, the IGE found that this was not the case. In particular, the IGE held that the syllables, cadence of pronunciation, visual appearance and consonants were different. In spite of these "clear differences", a certain similarity was found from a visual and aural point of view. However, a likelihood of confusion could be excluded since:

• the marks would be perceived conceptually as different coined marks; and
• the relevant consumers are more attentive when purchasing goods in Class 5.

On February 22 2013 the decision was appealed.

The court first determined the relevant consumers. As none of the marks was restricted to goods only available on prescription, the consumers consisted not only of doctors and pharmacists, but also of the end consumers of such products. However, as such goods are not daily consumption products, the court agreed that consumers would have a higher level of attention when buying them.

The court then analysed the marks and held that there were similarities, as well as dissimilarities. It was highly disputed how the trademarks would be pronounced. The court stated that both trademarks contained the ending '-elo', which is a typical ending for Italian diminutives. Therefore, all consumers would seek to pronounce the marks in an Italian way - that is, 'Tschitsello' and 'Schielo'/'Scheelo'. As such, the marks were significantly different. Further, the court noted that the opponent's mark consisted of three syllables ('Ci-zel-lo'), while the opposed mark consisted of two ('Scie-lo'). With regard to the conceptual meaning of the marks, the court held that they would not be understood as having a particular meaning, even though SCIELO is the acronym for 'Scientific Electronic Library Online' and Cizello is a very uncommon family name. In light of these dissimilarities, the appeal and the opposition were dismissed. The decision cannot be appealed.

The decision is interesting in that it gives guidance as to how to pronounce trademarks. If a trademark appears to have Italian roots, then it is likely - according to the court - that all relevant consumers from all parts of Switzerland will try to pronounce it in an Italian manner. The same would therefore apply to other languages.

Marco Bundi, Meisser & Partners AG, Klosters